WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Marshall Amplification PLC v. Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si, Wen Zhou Rui Xiang
Case No. D2018-0715
1. The Parties
The Complainant is Marshall Amplification PLC of Bletchley, Milton Keynes, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SafeNames Ltd., United Kingdom.
The Respondents are Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si of Wenzhou, Zhejiang, China, and Wen Zhou Rui Xiang of Beijing, China.
2. The Domain Names and Registrars
The disputed domain names <marshallheadphone.net> and <marshallheadphones.org> are registered with HiChina Zhicheng Technology Ltd. The disputed domain name <marshall.store> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details. On April 9, 2018, The Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 10, 2018. The Respondent requested that Chinese be the language of the proceeding on April 11, 2018.
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 Respondents in English and Chinese of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. The Respondents did not submit any formal response. On May 11, 2018, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Joseph Simone as the sole panelist in this matter on May 25, 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
Over the past few decades, the Complainant has been selling audio equipment under the trademark “Marshall” on a global basis and has registered the trademarks “Marshall” in a number of countries.
The disputed domain names are:
June 14, 2016
June 3, 2016
June 1, 2016
The Respondents are in China, namely: Wen Zhou Rui Xiang Jian Zhi You Xian Gong Si and Wen Zhou Rui Xiang, and the Complainant has provided the following information to support its request to consolidate the three disputed domain names into one dispute:
- All three disputed domain names feature the same email address (email@example.com);
- All three disputed domain names share a common feature of “WEN ZHOU RUI XIANG” as part of the Registrant Name; and
- All three disputed domain names were registered during the same month and year (June 2016).
According to the Complaint and corresponding evidence, the disputed domain names <marshall.store> and <marshallheadphone.net> resolved to websites only displaying the term “OK!”, and the disputed domain name <marshallheadphones.org> didn’t resolve to any active website.
Currently, the website resolved by <marshall.store> remains unchanged, and the other two disputed domain names, <marshallheadphone.net> and <marshallheadphones.org> are parked with a page displaying a notice Chinese which can be translated into English as “this domain has expired; please pay to renew”.
5. Parties’ Contentions
The Complainant contends that it has registered and unregistered rights in the mark MARSHALL. The Complainant further submits that the disputed domain names are confusingly similar to this mark, in that they are either identical to the Complainant’s mark or differ only by the addition of the English word “headphone(s)”, which relates back to the Complainant’s products. The Complainant also points out that the suffixes “.org”, “.net” and “.store” shall not be considered when assessing similarity.
The Complainant maintains that the Respondents have no rights or legitimate interests in respect of the disputed domain names and the trademarks “MARSHALL” to the best of its knowledge, and the Respondents are not commonly known by the name “MARSHALL” or “MARSHAL”. The Complainant confirms that it has not given permission to the Respondents to use its trademark in the disputed domain names, or for any other purpose. The Complainant asserts that the Respondents have not been trading under the disputed domain names for any length of time, and that the Respondents do not appear to be using the disputed domain names for any bona fide business or offering of goods or services. The Complainant also claims that there is no evidence that the Respondents have consistently or commonly used or become known by the disputed domain names, and that the Respondents are not making legitimate noncommercial or fair use of the Domain Name.
The Complainant alleges that the Respondents registered and are using the disputed domain names in bad faith. It submits that the Respondents should have access to the Internet and could thereby find the MARSHALL trademark on public databases and on search engines such as Baidu, and would have been aware of the Complainant’s rights. The Complainant asserts that the Respondents should have paid more heed to the representations made to their Registrar, to ensure that they did not infringe any trademark rights. The Complainant further adds that the Respondents are targeting the Complainant’s MARSHALL brand, with particular focus on headphones, which is one of the main products offered in the Complainant’s stores. The Complainant offered a list of domain names registered by the Respondents (i.e., Annex 2 of the Complainant’s submission) referring to the Complainant’s competitors as evidence demonstrating the Respondents’ “pattern of bad faith”.
As stated above, the Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary issue: Language of the Proceeding
The Registration Agreement in this case is in Chinese; but the Complainant filed the Complaint in English and requested that English be the language of the proceeding, for the following reasons:
- The Respondent is associated with other domain names which feature English words;
- If Chinese is adopted as the language of the proceeding, the Complainant will incur unnecessary costs and delays to prepare a translation of the complaint and such action is contrary to the intention of the Policy’s drafters to provide a cost-effective and expedited resolution process (Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679); and
- In compelling the Complainant to translate and submit this complaint in English the Panel would not be acting in keeping with the overriding principles in Paragraph 10, in particular 10(b), that the parties should be treated equally and given a fair opportunity to present their case, and 10(c), which preserves the time span of the process. (General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The Respondent did not respond on this issue.
Article 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter “WIPO Overview 3.0”) states that:
“…Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement…”
Further, Paragraph 10(c) of the Rules expressly states that:
"The Panel shall ensure that the administrative proceeding takes place with due expedition."
Although the disputed domain names are indeed comprised of English characters, in the Panel’s view, it does not follow from this alone that the Respondent is necessarily familiar with the English language.
That said, because the Respondent was notified in both English and Chinese by the Center of the nature and deadlines pertaining to the proceeding as well as the issue of the language of the proceeding, and because the Respondent failed to submit any response to the Complaint, the Panel does not believe it would be prejudicial to the Respondent if English were adopted as the language of the proceeding. The proceeding would be unduly delayed if the Complaint and annexes thereto were required to be translated into Chinese. In keeping with the Policy’s aim of facilitating a relatively time- and cost-efficient procedure for the resolution of domain name disputes, the Panel accordingly determines that it would be appropriate for English to be the language of the proceeding.
6.2 Preliminary issue 2: Consolidation of Respondents
“The WIPO Center may accept, on a preliminary basis, a consolidated complaint where the criteria described below are prima facie met. Any final determination on consolidation would be made by the appointed panel, which may apply its discretion in certain circumstances to order the separation of a filed complaint. In all cases, the burden falls to the party seeking consolidation to provide evidence in support of its request.”
The Panel agrees that the information provided by the Complainant is sufficient to show that the three disputed domain names are registered to and under the full control of one person or entity, therefore the complaints against the two Respondents may be consolidated.
6.3 Analysis and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the mark MARSHALL by virtue of the Complainant’s registrations and unregistered rights as a result of its extensive use of the mark around the world.
The disputed domain names all incorporate the Complainant’s trademark MARSHALL in its entirety, and the addition of the terms “headphone(s)” to two of the disputed domain names would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8. Additionally, the generic Top-Level Domains of the disputed domain names can be disregarded under the first element’s confusing similarity test, as they are a standard registration requirement. See WIPO Overview 3.0, section 1.11.1. Therefore, the Panel finds the disputed domain names are identical or confusingly similar to the Complainant’s trademark.
The Panel further finds that as discussed below, the addition of “headphone(s)” will only enhance such confusion as the manufacture and sale of such goods is among the Complainant’s main businesses.
The first requirement of the UDRP is therefore satisfied.
B. Rights or Legitimate Interests
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel agrees that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names.
The Respondents have not responded to the Complaint to present any evidence to establish rights or legitimate interests under this head. None of the circumstances set out in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondents to the Complainant’s contentions, and the fact that the Respondents were granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Respondents have failed to demonstrate any rights or legitimate interests in the disputed domain names.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, which includes (i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant, for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain name; or (ii) registration of the domain name by a respondent in order to prevent the trademark owner from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
The Panel agrees that there is no other realistic construction to place on the Respondents’ conduct other than that it registered the disputed domain names comprising the mark plus a term related to the Complainant’s goods with a view to selling them either to the Complainant or a competitor of the Complainant. Moreover, the Respondents did so in order to prevent the Complainant from reflecting its trademarks in the corresponding domain names, and the Complainant has provided evidence that the Respondents have engaged in a pattern of such conduct.
In addition, Section 3.3 of the WIPO 3.0 considers passive holding by the Respondent and explains that:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying these criteria to the circumstances of this case, it is self-explanatory that at least (i), (ii) and (iv) are fulfilled in whole.
Having regard to the above considerations, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith.
The third requirement of the UDRP is therefore satisfied.
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 names, <marshallheadphone.net>, <marshallheadphones.org>, and <marshall.store>, be transferred to the Complainant.
Date: June 8, 2018