WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cousins Submarines, Inc. v. Zhang Xiaohua
Case No. D2019-0547
1. The Parties
The Complainant is Cousins Submarines, Inc. of Menomonee Falls, Wisconsin, United States of America (“USA”), represented by Boyle Fredrickson, S.C., USA.
The Respondent is Zhang Xiaohua of Tengzhou, Shandong, China.
2. The Domain Name and Registrar
The disputed domain name <cousinssubsoshkosh.com> is registered with Xin Net Technology Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 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 March 15, 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 March 18, 2019.
On March 15, 2019, the Center sent 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 March 18, 2019. The Respondent did not comment on the language of the proceeding by the specified due date.
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 March 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2019.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 24, 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 the State of Wisconsin in the USA and the operator since 1990 of sandwich restaurants in Wisconsin and Illinois in the USA under the trade mark COUSINS SUBS (the “Trade Mark”), including two restaurants in the city of Oshkosh in Wisconsin.
The Complainant is the owner of several registrations in the USA for the Trade Mark, including registration number 1705595, with a registration date of August 4, 1992.
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Name
The disputed domain name was registered by the Respondent on December 24, 2018.
D. The Website at the Disputed Domain Name
The disputed domain name has been used in respect of a website apparently promoting both gambling related content, with sponsored links, and also the goods and services of a manufacturer of plastic containers apparently based in China, Fuchuan Plastic Company (the “Website”).
5. Parties’ Contentions
The Complainant 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 has been registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
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 the Rules, paragraph 11, 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 several reasons, including the following:
(i) The Complainant is a natural English speaker;
(ii) The disputed domain name is an English language domain name;
(iii) The Complainant’s registrations for the Trade Mark that form the basis of the Complainant’s rights herein are in the English language;
(iv) The proceeding will be unnecessarily delayed if the language of the proceeding is Chinese; and
(v) The Complainant can identify no discernible benefit to the parties or the proceeding to be gained by maintaining Chinese as the language of the proceeding.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
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 in all the circumstances there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. Although the content of the Website is predominantly in Chinese, the Website contains English language links to the Fuchuan Plastic Company as well as photographs of an array of its plastic containers and other plastic products.
The Panel also considers that the fact the disputed domain name comprises the Trade Mark together with the name of a small city in the State of Wisconsin (in which the Complainant operates two restaurants under the Trade Mark) provides in itself further evidence in support of a finding that the Respondent is conversant in English.
The Panel notes also that the Respondent has chosen not to contest this proceeding; and is 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 is 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 name of a city (Oshkosh) in which the Complainant operates two of its sandwich restaurants under the Trade Mark. The Panel notes also that the Complainant’s sandwich restaurants are ubiquitous in the State of Wisconsin (where there are more than 90 stores). The addition of the city name does not affect the confusing similarity between the disputed domain name and the Trade Mark (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the 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 organization) 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 he or she 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 Respondent has made use of the disputed domain name, for commercial gain, by providing gambling related content, with sponsored links, on the Website, as well as to promote the goods of Fuchuan Plastic Company, which goods include both disposable and reusable plastic food and sandwich containers.
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. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The evidence on record indicates that the Respondent sought to take advantage of the Trade Mark when registering the disputed domain name, by resolving it to the Website for commercial gain.
In light of the evidence of the Respondent’s use of the Website in the manner described above, and the fact the disputed domain name incorporates the entirety of the Trade Mark together with the name of a city in which the Complainant operates its sandwich restaurants, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy. In all the circumstances, the Panel considers there is no discernible reason for the Respondent to have registered and used the disputed domain name other than to take advantage of the Trade Mark for commercial gain.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being 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 <cousinssubsoshkosh.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 2, 2019