WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Johnson Controls Hybrid and Recycling GmbH v. Wang Jian Hua
Case No. D2018-1904
1. The Parties
The Complainant is Johnson Controls Hybrid and Recycling GmbH of Hannover, Germany, represented by Steven M. Levy, United States of America (“United States”).
The Respondent is Wang Jian Hua of Jinan, China.
2. The Domain Name and Registrar
The disputed domain name <varta-automotlve.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2018. On August 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 30, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed amended Complaints on September 2 and 4, 2018.
On August 30, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed that English be the language of the proceeding on September 2, 2018. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 September 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2018.
The Center appointed Francine Tan as the sole panelist in this matter on October 10, 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 the owner of the VARTA trademark which, it states, has been used since as early as 1921 in connection with batteries used in cars, boats and motorcycles.
The Complainant has customers in more than 150 countries and is a leading provider of automotive batteries. Its websites “www.jci.com” and “www.varta-automotive.com” have, within a six-month period alone, received over 750,000 and 93,000 visitors, respectively. The latter website provides information to prospective consumers and generates significant revenue for the Complainant.
In 2016, the Complainant was ranked 242nd in the Fortune Global 500 list with over 2,000 worldwide locations and 120,000 employees. In 2017, the Complainant generated over USD 30 billion in revenue. In 2017, for the sixth consecutive year, the Complainant was named “Top Employer” in China by the Top Employers Institute, which certifies excellence in the environment companies create for their employees.
The Complainant states that a search on Internet search engines for the term “varta automotive” returns results that nearly exclusively refer to the Complainant’s business and products. VARTA-branded goods are found in millions of cars, powerboats, motorhomes and motorcycles.
As a result of the Complainant’s long and extensive use and efforts to promote the VARTA trademark, the mark has gained significant common law and registered rights. The mark VARTA has become famous and is widely recognized by consumers.
The Complainant’s VARTA mark has been registered in many jurisdictions including in China (Registration No. 158166) and the European Union (Registration No. 4182705). The former was registered on May 30, 1982 and the latter, on February 10, 2006.
The disputed domain name was registered on September 1, 2017. According to the Complaint and relevant evidence, the disputed domain name resolves to a website titled “GNB Industrial Power” that offers the sale of competing battery products.
5. Parties’ Contentions
1. The disputed domain name is identical or confusingly similar to the Complainant’s VARTA trademark.
The VARTA mark became globally famous long before the date the disputed domain name was registered.
The addition of the hyphen in the disputed domain name does not reduce the confusing similarity with the Complainant’s VARTA trademark. The addition of the descriptive, albeit slightly mis-spelled term, “automotlve”, serves to increase the confusing similarity with the Complainant’s business and goods in respect of which the VARTA trademark is used.
2. The Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent’s actions are not a bona fide offering of goods or services as the Respondent’s website to which the disputed domain name resolves offers the sale of competing battery products. The Respondent’s intention is to confuse consumers into believing that they have reached the Complainant’s website. The Respondent’s website does not contain any notice of its lack of a relationship with the Complainant. In any event, even if the Respondent’s website sells some of the Complainant’s products, it does not meet the test set out in the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Respondent is not commonly known by the disputed domain name (the Respondent’s website shows the title “GNB Industrial Power” and the Respondent’s name is reflected in the WhoIs records as “Wang Jian Hua”). The Respondent has no relationship with the Complainant and has not been authorized by the Complainant to register the disputed domain name.
3. The Respondent registered and used the disputed domain name in bad faith.
Bad faith can be found where a respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to its source, sponsorship, affiliation, or endorsement of the website or location, or of a product or service on such website or location (para. 4(b)iv), Policy).
The fact that the disputed domain name specifically incorporates a mis-spelling of the word “automotive” and the word “varta” which has no meaning in most languages, shows that the disputed domain name was copied from the Complainant’s VARTA mark. The Respondent is using the VARTA mark to misappropriate the goodwill of the Complainant and redirect traffic intended for the Complainant’s website at “www.varta-automobile.com”, and advertising the sale of competing goods.
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 the language of the proceeding although the Registration agreement is in Chinese. The reasons for its request are:
i. the disputed domain name is composed of a coined word plus a misspelling of the English word “automotive”;
ii. the company name appearing on the Respondent’s website is in English;
iii. the Respondent’s website contains a number of additional words in the English language, including “latest products”, “about us” and “latest news”; and
iv. it would not be fair or equitable to require the Complainant to incur time and expense in translating the pleadings for this proceeding into Chinese.
The Complainant proposed for the Respondent, if necessary, to put forth its facts and arguments in response to the proceeding in a language other than English.
The Respondent did not respond on the issue of the language of the proceeding.
Paragraph 11(a) of the Rules provides that “unless 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”.
The Panel determines that it would be appropriate in this case for English to be the language of the proceeding. The Respondent did not object to the Complainant’s request on the issue of the language of the proceeding. The Panel is satisfied that the Respondent is familiar and comfortable with the English language when one considers the elements making up the disputed domain name and the fact that the Respondent’s company name on its website is in English and the website includes various English headings or titles. In the absence of any response by the Respondent and considering that the Complainant was prepared to receive a Response and communications from the Respondent in Chinese, the Panel finds no justification for delaying the proceeding by requiring the Complainant to file its Complaint and evidence in Chinese.
A. Identical or Confusingly Similar
The Complainant has trademark rights in VARTA. The disputed domain name comprises the word VARTA in its entirety and it is identifiable therein. The Panel agrees that the addition of the descriptive word (albeit mis-spelt), “automotive” and the hyphen does nothing to remove the confusing similarity with the Complainant’s trademark, VARTA, in which it has rights.
The Panel therefore concludes that the disputed domain name is confusingly similar to the VARTA trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy indicates how a respondent can demonstrate his rights or legitimate interests to the disputed domain name, namely by establishing any of the following circumstances (which list is not exhaustive):
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although a complainant is required under the Policy to establish all three elements of paragraph 4(a) of the Policy, the general consensus view of UDRP panelists is that complainants are only required, in relation to paragraph 4(a)(ii) of the Policy, to establish a prima facie case in support. The burden thereafter moves to the respondent to produce, with evidence, showing that it has rights or legitimate interests in the domain name in dispute.
The Panel concludes that the Complainant has satisfied its burden of establishing a prima facie case. There is no evidence of any relationship between the Complainant and the Respondent; there is no evidence that the Respondent has been authorized by the Complainant to register the disputed domain name; and there is no evidence that the Respondent has been commonly known by the name “Varta”.
The Panel agrees that the Respondent does not meet the test set out in the case of Oki Data Americas, Inc. v. ASD, Inc., supra. Amongst other things, the “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774;(WIPO February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate)”.
The Respondent did not file any response to demonstrate it has rights or legitimate interests in the disputed domain name. In the absence of contrary evidence, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the circumstances of this case fall within paragraph 4(b)(iv) of the Policy. The incorporation of the entire trademark VATAR in the disputed domain name and its combination with the mis-spelt word “automotlve”, gives rise to a strong 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. The Complainant has such a strong reputation in the VATAR trademark for use in relation to the automotive industry that it is not at all plausible that the Respondent registered the disputed domain name without prior knowledge of the Complainant and its VATAR trademark, and without any intention to confuse Internet users looking for the Complainant and its products and to redirect them to the Respondent’s website. The advertising of third-party goods which compete with the Complainant’s products does not constitute a good faith offering of goods.
In the premises, the Panel finds that the third 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 <varta-automotlve.com> be transferred to the Complainant.
Date: October 14, 2018