WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aulbach Lizenz AG v. Dong Li
Case No. D2018-0140
1. The Parties
The Complainant is Aulbach Lizenz AG of Chur, Switzerland, represented by Dreyfus & associés, France.
The Respondent is Dong Li of Xiamen, China.
2. The Domain Name and Registrar
The disputed domain name <daniehechter.com> (the “Domain Name”) is registered with DomainName Driveway, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2018. On January 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On February 21, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on April 5, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
DANIEL HECHTER is a French fashion and lifestyle brand founded in 1962 by Mr. Daniel Hechter. His goal was to offer a wearable yet high-quality creative fashion for a wide range of consumers. The Daniel Hechter Company was one of the first to produce clothing ranges for skiing and tennis in 1971. Over time, Daniel Hechter expanded his company, developing it into an international brand expanding to the segments of sports, relaxation, leisure wear, eyewear, perfume, pens, watches and leather goods.
The DANIEL HECHTER brand is currently being sold in more than 60 countries, and 3000 points of sale all around the world. The Complainant has a strong presence in China and has a number of shops there, most notably in Beijing, Jilin, Guangdong, Shanghai, Hunan, Shandong, Liaoning, Henan, Jiangsu, Zhejiang, Anhui, Shanxi, Hebei, Fujian, Guangxi, Hubei, Hainan, Ningxia and Chongqing.
The Complainant and its predecessors in title acquired the DANIEL HECHTER trade mark in 1998. It owns DANIEL HECHTER trade mark registrations throughout the world including in China where the Respondent is based. The Complainant is relying on the following trade marks (individually and collectively referred to as the “Trade Mark”) in connection with the Complaint:
- Chinese Trademark “DANIEL HECHTER + logo” No. 4138443, registered on
February 28, 2008 and covering goods in class 25;
- Chinese Trademark “DANIEL HECHTER + logo” No. 4147420, registered on
March 28, 2008 and covering goods in class 18;
- International Trademark DANIEL HECHTER No. 405276A, registered on
March 15, 1974, duly renewed and covering goods in classes 14 and 25;
- Argentina Trademark DANIEL HECHTER registered on January 29, 1993
under the number 1416870 and duly renewed under the numbers 1923845 and
2596797, covering goods in class 25.
The Complainant also operates directly or via affiliates, the following domain names reflecting its Trade Mark in order to promote its services: <daniel-hechter.de>, <daniel-hechter.com> and <daniel-hechter.cn>.
The Respondent is a Chinese national who registered the Domain Name on August 13, 2017. When the Complainant first became aware of the Domain Name, it was redirecting to a Chinese website "www.asd55.com/main.html?m=” which offered online games for a fee (the “Website”). It presently resolves to an error page.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not respond to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English and that no prejudice will result from conducting it in English. The Complainant contends that as a French based company which does not communicate in Chinese, conducting the proceeding in Chinese will be unduly disadvantageous in terms of costs and the delay that would be caused. Moreover, the Complainant argues that the Domain Name is in the Latin alphabet rather than Chinese which indicates that the Respondent has knowledge of English. Finally, the Complainant contends that English is the primary language for international relations.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the domain name is confusingly similar to the trade mark. The trade mark would generally be recognizable within the domain name. In this case the Domain Name contains the Complainant’s trade mark DANIEL HECHTER missing the last letter “L” in the first name DANIEL. This is typical of typo-squatting cases. The deletion of one letter in the middle of the Domain Name does not minimise the risk of confusion.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to disregard the generic Top-Level Domain (“gTLD”) as the gTLD is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as specified in section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise permitted the Respondent to use the Trade Mark or register the Domain Name or any domain names incorporating the Trade Mark. The Respondent is not commonly known by the Domain Name and the use of the Domain Name does not fall within any of the above categories which would grant him rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name given the reputation of the Trade Mark. It is implausible that it was unaware of the Complainant when it registered the Domain Name especially since the Trade Mark consists of the combination of the first and second name of a person which is not typical of a name in Chinese.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that the Trade Mark is a well-known mark and the absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Name are significant factors to consider (see section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The Domain Name was resolving to a paid games website which was likely to be of commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Name into their browsers, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. It is also highly likely that the users whilst doing this may mistype the Trade Mark and leave out one letter in the middle of the Domain Name. The use of the Domain Name is extremely likely to confuse Internet users trying to find the Complainant’s official website. Such confusion is inevitable due to the incorporation of the Trade Mark as the most prominent element of the Domain Name.
The Respondent employs the fame of the Trade Mark to mislead users into visiting the Website instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of, or authorised, or endorsed by the Complainant. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <daniehechter.com> be transferred to the Complainant.
Date: April 19, 2018