WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Covestro Deutschland AG v. Guan Chao Xiang
Case No. D2019-0126
1. The Parties
The Complainant is Covestro Deutschland AG of Leverkusen, Germany, represented by BPM Legal., Germany.
The Respondent is Guan Chao Xiang, Shanghai, of China.
2. The Domain Name and Registrar
The disputed domain name <covestro.tech> 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 January 21, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2019, 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 24, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 30, 2019.
On January 24, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On January 30, 2019, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on 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 proceedings commenced on February 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2019. The Respondent sent an email communication on February 23, 2019. The Center sent an email regarding possible settlement to the Parties on February 25, 2019. The Complainant requested a suspension of the proceeding on February 28, 2019. The Center notified the Parties of the suspension on March 1, 2019. According to the Complainant’s request, the Center notified the Parties of the extension of the suspension on March 29, 2019 and notified the Parties of the reinstitution of proceedings on April 30, 2019.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on May 16, 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 subsidiary of Bayer AG, and is one of the world’s largest polymers companies. The Complainant has about 30 production sites throughout Europe, Asia and the United States of America, with over 15,000 employees.
The Complainant owns a portfolio of trademark registrations for COVESTRO, for example European Union trademark No. 13701412 for COVESTRO, registered on July 28, 2015, and International trademark registration No. 1272950 for COVESTRO, registered on May 15, 2015 and designating, inter alia, the Respondent’s home jurisdiction China. Incidentally, the relevant registered trademarks adduced by the Complainant were successfully registered prior to the registration date of the disputed domain name, which was registered on September 21, 2018, and is linked to an inactive website.
5. Parties’ Contentions
The Complainant essentially contends that the disputed domain name is identical or confusingly similar to its trademarks for COVESTRO, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive and well known in the polymers industry, and provides evidence of press releases and articles regarding its initial IPO and launch as an entity separate from its parent company Bayer, including an article in a Chinese publication (the newspaper China Daily). The Complainant essentially claims that the actions of the Respondent amount to “passive holding” of the disputed domain name and contends that such use does not confer any rights or legitimate interests and constitutes registration and use in bad faith.
The Complainant requests the transfer of the disputed domain name.
The Respondent’s communications in these proceedings are limited to two emails regarding a potential settlement (sent on February 23, 2019 and on March 29, 2019), in which the Respondent insisted on a “reasonable transfer fee” for the amicable settlement of these proceedings. The Respondent did not comment on the language of the proceedings, and did not reply to the Complainant’s contentions on the merits.
6. Discussion and Findings
6.1. Preliminary Issue: Language of proceedings
Pursuant to paragraph 11(a) of the Rules, 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 Complainant stated in its Complaint that it could only locate an English version of the Registration Agreement. However, the Registrar confirmed that the Registration Agreement was drafted in Chinese. The Complainant nevertheless filed its Complaint and amended Complaint in English, and requests that the language of proceedings be English.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of proceedings be English; the Respondent’s lack of comment on the language of the proceedings and its lack of response on the merits (the Panel notes that the Respondent had the opportunity to reply in either English or Chinese); the fact that the Respondent sent two emails regarding a potential amicable settlement (on February 23, 2019 and on March 29, 2019), which were both in English, from which the Panel deducts that the Respondent is clearly able to understand and communicate in English; and the fact that Chinese as the language of proceedings could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of proceedings shall be English.
6.2. Discussion and Findings on the merits
The Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence and arguments submitted, the Panel’s findings are as follows:
A. Identical or Confusingly Similar
The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the mark COVESTRO, based on its use and registration of the same as trademarks, incidentally commencing prior to the registration of the disputed domain name.
Moreover, as to identity or confusing similarity of the disputed domain name with the Complainant’s trademarks, the disputed domain name consists of only a single element, which is the Complainant’s COVESTRO trademark. The addition of the generic Top-Level Domain “.tech” does not alter this finding. See in this regard WIPO Overview 3.0, section 1.11: “The applicable Top Level Domain […] is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Accordingly, the Panel rules that the disputed domain name is identical to the Complainant’s trademarks, and the first element required by the Policy is fulfilled.
B. Rights or Legitimate Interests
The Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply (see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply to the Complaint. The Panel therefore rules that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad Faith
Given the reputation of the Complainant’s trademarks, the registration of the disputed domain name, which incorporates such trademarks in their entirety, was clearly intended, from the outset, to mislead and divert consumers to the disputed domain name. The Complainant’s trademarks, and the publications regarding the Complainant’s IPO, including in a Chinese newspaper produced by the Complainant, predate the registration date of the disputed domain name, which was registered on September 21, 2018. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned, and owns, trademarks in COVESTRO and uses these marks extensively, including in the Respondent’s home jurisdiction China. In the Panel’s view, this clearly indicates the bad faith of the Respondent, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.
As to use of the disputed domain name in bad faith, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. Having regard to all elements of the case at hand, and in particular to the fact that the only element in the disputed domain name is the Complainant’s trademark, the high degree of distinctiveness and reputation of the Complainant’s trademark, even in the Respondent’s home jurisdiction China, and the fact that the Respondent insisted on a “transfer fee” in its emails of February 23, 2019 and March 29, 2019 (see in this regard paragraph 4b(i) of the Policy), the Panel rules that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
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 <covestro.tech> be transferred to the Complainant.
Deanna Wong Wai Man
Date: May 23, 2019