WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Athmospheres International v. desheng zhao, zhao desheng
Case No. D2018-0350
1. The Parties
The Complainant is Athmospheres International of Boulogne Billancourt, France, represented by Cabinet Bouchara, France.
The Respondent is desheng zhao, zhao desheng of Wenzhou, Zhejiang, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <pierimport.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2018. On February 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 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 24, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. By emails dated February 25, 2018 and February 26, 2018, the Respondent requested that Chinese be the language of the proceeding. On March 7, 2018, the Complainant confirmed its request included in the Complaint that English be the language of the proceeding.
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 proceeding commenced on March 9, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was March 29, 2018. On March 14, 2018, the Respondent requested an extension of time for filing the Response. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was updated to April 2, 2018. On April 2, 2018, the Respondent requested a further extension of time, until April 3, 2018, for filing of the Response. The Response was filed with the Center on April 3, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 19, 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
The Complainant is a company incorporated in France and a manufacturer and retailer for many years of a wide range of furniture and household accessories under the trade mark PIER IMPORT (the “Trade Mark”).
The Complainant is the owner of numerous registrations covering a wide range of goods and services for the Trade Mark worldwide, including international registration No. 491213 (designating China), with a registration date of January 30, 1985; and French registration No. 1280928, with a registration date of July 31, 1984.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered on January 15, 1999.
D. The Website at the Disputed Domain Name
The disputed domain name resolves to a parking page with sponsored links (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
The Respondent contends that:
(i) the disputed domain name consists of two common words, and the registration of domain names comprising common words is commonplace;
(ii) the Respondent has rights and legitimate interests in respect of the disputed domain name because it comprises two common words;
(iii) the Complainant has concealed from the Center the fact that it tried to purchase the disputed domain name in 2014 when it was listed for sale by the Respondent on the “www.sedo.com” website;
(iv) the Trade Mark is a French trade mark that is not well-known in China;
(v) the Respondent conducted searches of the Chinese Trade Marks Office database and did not know of the Trade Mark prior to registration of the disputed domain name;
(vi) the disputed domain name has been parked since 2014 at the Website by default; and
(vii) domain names comprising common words sell on the open market for very high prices, and the Respondent’s offer to sell the disputed domain name for EUR 10,000 is reasonable and is not excessive.
The Respondent also requests a finding of reverse domain name hijacking against the Complainant.
6. Discussion and Findings
6.1 Late Filing of the Response
Paragraph 14(a) of the Rules provides that, in the event of a late response, absent exceptional circumstances, panels shall proceed to a decision based solely on the complaint.
Paragraph 14(a) of the Rules is counterbalanced by paragraph 10(b) of the Rules, which requires panels to ensure that parties are treated with equality and that each party is given a fair opportunity to present its case.
The Respondent requested a further extension of time of one day (until April 3, 2018) for filing of the Response.
The grounds in support of the Respondent’s request are that it took some time for the Respondent to translate the Complaint using Google Translate, and that it took longer than expected for the Respondent to do so, as the Complaint was filed and served in pdf format.
In all the circumstances, and also taking into account the fact the Response was filed before the appointment of the Panel, and the one day extension has not delayed the resolution of this proceeding – and also bearing in mind the Panel’s obligations under paragraph 10(b) of the Rules – the Panel has decided that it will accept the late filing of the Response.
6.2 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. However, paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Website comprises predominantly English language (and also French language) sponsored links. The Complainant also relies upon the findings of the learned panelist in WIPO Case No. D2014-1382, a proceeding involving the same Respondent as the present proceeding, that the Respondent is proficient in English, having, amongst other things, sent emails in fluent English to potential victims of the Respondent’s fraudulent Internet scam.
The Respondent has requested that the language of the proceeding be Chinese. The Respondent contends that the Respondent only understands simple English and needs to use translation tools to understand English properly, and that it would be unfair for the language of the proceeding to be English. The Respondent also contends (without any supporting evidence), that the language used on the Website is automatically converted to the language of the viewer’s nationality (in the Respondent’s case, Chinese).
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 finds that the contents of the Website demonstrate that the Respondent is conversant in English. The Panel does not find the Respondent’s bare assertions regarding the “automatic” language used on the Website convincing. The Panel also notes the finding of the learned panelist in WIPO Decision No. D2014-1382 as to the Respondent’s English language proficiency (which finding was not challenged by the Respondent in the present proceeding).
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel therefore determines, under paragraph 11(a) of the Rules, that it will:
(i) Accept the filing of the Complaint in English;
(ii) Accept the filing of the Response in Chinese; and
(iii) Render this decision in English.
6.3 Substantive Elements of the Policy
The Complainants must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Excluding the generic Top-Level Domain “.com”, the disputed domain name is identical to the Trade Mark.
The Panel therefore finds that the disputed domain name is identical to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which, without the Complainant’s authorisation, provides sponsored links to third party websites relating to furniture and related goods, in direct competition with the goods manufactured and sold by the Complainant under the Trade Mark.
Even if the Panel were to accept the Respondent’s contention that the disputed domain name comprises two common words (and notwithstanding the Complainant’s long-standing rights in the Trade Mark), the use to which the disputed domain name has been put (so as to link to websites of the Complainant’s competitors) belies the Respondent’s argument.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Furthermore, although not strictly necessary for the finding of bad faith under paragraph 4(b)(iv) of the Policy, the Panel does not find the Respondent’s bare assertion that the Respondent had no knowledge at the time of registration of the disputed domain name of the Complainant and of the Complainant’s rights in the Trade Mark convincing. In this regard the Panel notes the uncontested evidence filed with the Complaint that the Respondent is the owner of 107 domain names, many of which comprise well-known trade marks.
The Panel also finds that the Respondent’s offer to sell the disputed domain name for EUR 10,000 constitutes bad faith under paragraph 4(b)(i) of the Policy. Whether or not there is a market for the sale of domain names comprising common words for very high prices, as asserted by the Respondent, is immaterial for the purposes of paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
D. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under the Rules as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
The Complainant has succeeded in this proceeding and on that fact alone there is no basis for a finding of reverse domain name hijacking.
The Respondent’s request for a finding of reverse domain name hijacking is based on the sole ground that the Complainant concealed from the Center the fact it had previously bid to buy the disputed domain name from the Respondent, using the “www.sedo.com” platform. The evidence filed with the Response does not however support the Respondent’s contention that the Complainant has previously bid for the disputed domain name. In any event, even if the Complainant or its representative have previously sought to buy the disputed domain name from the Respondent or from the Respondent’s agents, such conduct under the circumstances of this case does not give rise to any grounds for asserting reverse domain name hijacking against the Complainant.
Accordingly, the Respondent’s request for a finding of reverse domain name hijacking is dismissed.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pierimport.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 3, 2018