WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Esselunga S.P.A. v. Wang Lian Feng
Case No. D2018-0842
1. The Parties
The Complainant is Esselunga S.P.A. of Milan, Italy, represented by Barzanò & Zanardo Milano SpA, Italy.
The Respondent is Wang Lian Feng of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <esselunga.site> 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 April 16, 2018. On April 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 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 April 19, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on April 20, 2018. 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 in English and Chinese of the Complaint, and the proceedings commenced on April 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 22, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on May 30, 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 an Italian retail store chain, founded in 1957, with total revenues amounting to EUR 6.8 billion, and with more than 150 points of sale. The Complainant operates an active website at "www.esselunga.it".
The Complainant is the owner of several domain names with different Top-Level Domain ("TLD") and country-code TLD names containing the ESSELUNGA trade mark, including <esselunga.it> and <esselunga.eu>. The Complainant is the registered owner of the ESSELUNGA word and figurative marks in Italy (Italian Registration Nos. 1290783 dating from March 12, 1980 and 1480754 dating from April 9, 2002), as well as the European Union (European Union Trade Mark Registration No. 3370202 for ESSELUNGA BIO registered on May 4, 2005).
The disputed domain name was registered on February 17, 2018 and does not resolve to any active website. The Complainant sent a cease and desist letter to the Respondent on March 23, 2018, requesting the transfer of the disputed domain name. The Respondent did not reply.
5. Parties' Contentions
1. The disputed domain name is identical to the Complainant's ESSELUNGA trade mark;
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not an authorized dealer, agent, distributor, wholesaler or retailer of the Complainant. The Respondent has never been authorized by the Complainant to include its ESSELUNGA trade mark in the disputed domain name not to make any other use of the trade mark. There is no evidence that the Respondent is commonly known by the disputed domain name nor that the Respondent owns trade mark rights in ESSELUNGA. There is also no evidence that the disputed domain name is used in connection with a bona fide offering of goods and services.
3. The disputed domain name was registered and is being used in bad faith notwithstanding the passive holding of the disputed domain name. The fact that ESSELUNGA is well known as a trade mark of the Complainant and is a fanciful word make it inconceivable that the intention in registering the disputed domain name is not related to the Complainant's activities. The disputed domain name was moreover registered long after the filing and registration of the Complainant's ESSELUNGA trade marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
The Complainant requested that English be adopted as the language of the proceeding notwithstanding that the language of the Registration Agreement is Chinese because:
(i) the Complainant does not understand Chinese;
(ii) It would be burdensome and expensive for the Complainant to translate the Complaint and annexes into Chinese;
(iii) such translation work would delay the proceeding;
(iv) the disputed domain name comprises a word in Latin characters with the generic TLD ".site", which is a common English word and this suggests that the Respondent has knowledge of the English language; and
(v) English is the primary language used in the business world.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules stipulates that: "[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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". Paragraph 10(c) of the Rules stipulates that "The Panel shall ensure that the administrative proceeding takes place with due expedition".
The Panel is of the view that it would be appropriate for English to be adopted as the language of the proceeding. The disputed domain name relates to an English-language generic TLD, ".site" and comprises solely of the Complainant's well-established trade mark. The Respondent did not at any time indicate to the Center that it was unable to understand or correspond in English. The inference to be drawn is that the Respondent is sufficiently familiar with the English language and has simply chosen not to respond to the Complainant's cease and desist letter and to the Complaint filed. The Respondent could have corresponded with the Center and/or filed a response in Chinese but did not. To require the Complainant to have the Complaint and annexes translated into Chinese would lead to a delay in the proceeding, which is contrary to the policy aim prescribed by the Rules.
The Respondent has provided no ground for making the Panel believe that it would be prejudiced by this decision.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the ESSELUNGA trade mark in which the Complainant has shown to have rights. The only difference lies in the generic TLD ".site", which is a technical requirement of domain names. This difference does not have any effect in removing the identity with the Complainant's ESSELUNGA trade mark.
The Panel therefore finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant did not authorize the Respondent to use the ESSELUNGA trade mark or to register the disputed domain name. There is no evidence that the Respondent has been known by the name "esselunga", or that there have been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. Considering the length of time that the Complainant's business under the trade mark has been in operation, the extent of global sales, as well as the fanciful nature of the word "esselunga", it is not easy to envisage how the Respondent would be able to assert any rights or legitimate interests in the disputed domain name. The Respondent did not respond in the proceeding and has provided no cause for the Panel to believe that he Respondent has rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
As a result of longstanding use and substantial promotional efforts and advertising investments, the Complainant's ESSELUNGA trade mark has become well known and was recognized as such in Esselunga S.p.A. v. Carla Giorgi, WIPO Case No. D2017-2107.
The Panel concludes that the circumstances of this case fall within paragraph 4(b)(iv) of the Policy. The incorporation of the entire trade mark ESSELUNGA in the disputed domain name, without any differentiation whatsoever, leads to a presumption that the Respondent had registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. Although the disputed domain name is not in active use, this fact alone does not prevent a finding of bad faith registration and use. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) It can be surmised from the coined nature of the word "esselunga" that the Respondent must have been aware of the reputation of the Complainant and its business when it registered the disputed domain name. The Respondent provided no explanation for how it came to adopt this term for its domain name registration. Considering the length of time (more than 50 years) and extent to which the Complainant has been in business, it is all the more crucial for the Respondent to have filed a response and to persuade the Panel that it was not aware of the Complainant and its rights in the trade mark ESSELUNGA at the time of registering the disputed domain name. The Respondent failed to do so.
The Panel therefore finds that the disputed domain name was registered and has been used in bad faith. The second element of paragraph 4(a) of the Policy has been 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 name <esselunga.site> be transferred to the Complainant.
Date: May 31, 2018