WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Harboes Bryggeri A/S v. Ray Yao (Rayyao1018)
Case No. D2018-2918
1. The Parties
The Complainant is Harboes Bryggeri A/S of Skaelskoer, Denmark, represented by PATRADE A/S, Denmark.
The Respondent is Ray Yao (Rayyao1018), Beijing, China.
2. The Domain Name and Registrar
The disputed domain name <ixrayenergy.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 December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 January 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center transmitted an email to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on January 9, 2019, in which it requested that English be the language of the proceeding.
The Center verified that the Complaint together with the amended 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 proceeding commenced on January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2019. On the same date, and in reply to the Center’s notification of Respondent default, the Respondent sent a Chinese language email regarding the dispute to the Center.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 15, 2019. 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 Denmark.
The Complainant has, since 2002, produced, promoted and sold energy drinks under the trade mark X RAY (the “Trade Mark”) internationally, including in China.
The Complainant is the owner of registrations in several jurisdictions for the Trade Mark, including international registration No. 1268888, designating China, registered on August 21, 2015.
The Complainant also promotes and sells its energy drinks using the unregistered trade mark X-RAY ENERGY DRINK, including on the Complainant’s energy drink cans.
The Respondent is an individual apparently with an address in Beijing, China.
C. The Disputed Domain Name
The disputed domain name <ixrayenergy.com> was registered on January 29, 2018.
D. Website at the Disputed Domain Name
The disputed domain name is resolved to a website that reproduces the Complainant’s various logos and trade marks, including the Trade Mark, and also the Complainant’s imagery and photographs of the Complainant’s energy drink products, in order to apparently promote and offer for sale the Complainant’s energy drinks, as well as sports, gaming and musical events (the “Website”).
5. Parties’ Contentions
The Complaint 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 was registered and is being used in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. In the Respondent’s informal email to the Center, the Respondent did not address the substantive elements of the Policy, but stated that the Respondent is willing to sell the disputed domain name to the Complainant for $2,000,000.00.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to paragraph 11 of the Rules, 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.
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 the following reasons:
(i) The content of the Website is in English;
(iii) In the Respondent’s Facebook page and Instagram account, the Respondent communicates primarily in English; and
(iv) Conducting the proceeding in Chinese would be a significant disadvantage to the Complaint since the Complainant is Danish.
The Respondent, having received notice of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding and did not file a formal response.
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 there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. In this regard the Panel notes that the Website is available in two languages – Chinese and English. 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 not foreseeable that the Respondent would be prejudiced should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant 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) together with the letter “i” and the word “energy”.
Where a relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel notes also the Complainant’s widespread use of the Trade Mark together with the word “energy” on the product packaging and in the promotional materials for the Complainant’s energy drinks (including in the Complainant’s unregistered X-RAY ENERGY DRINK trade mark featured prominently on the Complainant’s energy drink cans).
The Panel therefore finds that the disputed domain name is confusingly similar both to the Trade Mark and to the unregistered X-RAY ENERGY DRINK 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 organisation) 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 undisputed evidence on the record shows that the disputed domain name has been used in respect of the Website, in order to pass off the owner of the Website as the Complainant or a person sponsored, licensed, authorised or approved by the Complainant, including by making unauthorised use of the Complainant’s various trade marks and logos, and of the Complainant’s promotional materials, photographs and imagery protected by copyright and used by the Complainant to promote its energy drink products.
The Complainant has also furnished evidence of the filing of four pending trade mark applications in China on February 1, 2018 for the trade mark XRAY ENERGY in classes 32 and 33 for various beverages, and filed in the name of “Yao Rui”. The applications were accepted for registration in September 2018 and have been opposed by the Complainant. The Complainant firmly believes, but is unable to prove definitively, that “Yao Rui” is the same person as the Respondent herein, “Ray Yao”. It is trite in any event that pending trade mark applications do not, of themselves, give rise to rights or legitimate interests under the second limb of paragraph 4(a) of the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; 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 manner of use of the disputed domain name highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out, under Section 4(b)(iv) of the Policy.
The Panel also finds that the Respondent’s unsolicited offer to sell the disputed domain name to the Complainant for $2,000,000 amounts to bad faith under Section 4(b)(i) of the Policy.
In light of the usual practice in China of the surname preceding the given name, and accordingly the marked similarity between the named Respondent herein (Ray Yao) and the applicant in respect of the trade mark applications (Yao Rui), in all the circumstances (including the uncontested evidence submitted by the Complainant herein), the Panel considers it is likely the trade mark applications referred to in Section B above were filed by the Respondent herein, in order to attempt to legitimise the Respondent’s illegitimate use of the Trade Mark. The Panel considers this amounts to further grounds in support of a finding of bad faith, under the Panel’s general discretion.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and used in bad faith.
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 <ixrayenergy.com> be cancelled.
Sebastian M.W. Hughes
Date: March 1, 2019