WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sandvik Intellectual Property AB v. caixuefen, jinan terry cnc tool limited company
Case No. D2019-0611
1. The Parties
The Complainant is Sandvik Intellectual Property AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is caixuefen, jinan terry cnc tool limited company of Jinan, China.
2. The Domain Name and Registrar
The disputed domain name <sandvikcn.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 March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 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 25, 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 25, 2019.
On March 25, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 25, 2019, the Complainant confirmed its request 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 April 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on May 3, 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
Founded in 1862, Sandvik AB is a high technology engineering group in tools and tooling systems for metal cutting, equipment for mining and construction, products in advanced stainless steel and special alloys, as well as products for industrial heating. Sandvik AB has about 42,000 employees and sales in more than 160 countries. The revenue of the company reached SEK 100 billion in 2018.
The Complainant is a subsidiary of Sandvik AB which provides intellectual property services to the group. The Complainant is the holder of worldwide trade mark registrations comprising or containing SANDVIK, including:
SANDVIK International Registration No. 1039878, designating China, registered on February 2, 2010, in classes 06, 07, 08, 09, 10, 11, 12, 14, 37 and 38.
SANDVIK Chinese Registration No. 287182, registered on May 20, 1987, in class 06; and
(logo) Chinese Registration No. 9022167, registered on April 21, 2012, in class 07.
(collectively referred to as the “SANDVIK Trade Marks”).
These registrations cover, amongst others, “steel sheets; steel pipes; machines castings; galvanized iron sheets” in class 06 and “lathes (machine tools); drill press metalworking machines; drilling machines; machines tools” in class 07.
The Complainant owns several Top-Level Domains (“TLDs”) including <sandvik.com> and <sandvik.cn>.
The disputed domain name was registered on August 9, 2014. The disputed domain name currently does not resolve to any website, but previously redirected users to a website which displayed the Complainant’s SANDVIK Trade Marks and trade name in English and Chinese, along with information about the “Sandvik Coromant” brand and images of machine tools.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its prior SANDVIK Trade Marks and domain names. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorised the Respondent to use the SANDVIK Trade Marks in any manner, nor to own and use the disputed domain name. No business relationship exists between the parties and the disputed domain name is not used in connection with a bona fide offering of goods or services. The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent chose the disputed domain name with knowledge of the Complainant’s activities and is using it to divert customers to its website for illegitimate commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company from Sweden. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) English is not the native language of either Party;
(c) The disputed domain name is comprised of Latin characters and previously resolved to a website which contained content in the English language which indicates a level of comprehension of the language;
(d) The Complaint has been submitted in English. All of the Center’s case-related communications to the Parties have been transmitted in both English and Chinese. The Respondent has been informed by the Center that it would accept a Response in either English or Chinese. No foreseeable procedural benefit may be served by requiring Chinese to be the language of the proceeding. On the other hand, the proceeding may proceed expeditiously in English.
(e) The Respondent has failed to participate in the proceeding and has been notified of its default.
As one panel put it in the case Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191:
“…a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.”
6.2. Substantive Issues
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced sufficient evidence to demonstrate its established rights in the SANDVIK Trade Marks.
The Panel notes that the disputed domain name fully encompasses the Complainant’s SANDVIK word mark followed by the letters “cn”, commonly understood as the generic geographical designation for China. Where the relevant trade mark is recognisable within the disputed domain name, the addition of a geographical term would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is permissible for the Panel to ignore the TLD suffix, in this case, “.com”.
Given that the Complainant’s SANDIVK trade mark is recognisable within the disputed domain name, the Panel finds that it is confusingly similar to the Complainant’s mark.
Therefore, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the SANDVIK Trade Marks whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See International Hospitality Management ‑ IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.
The Complainant claims that the Respondent has not made legitimate, noncommercial use of the disputed domain name. The Complainant has submitted archived web pages demonstrating that the disputed domain name previously redirected users to the Respondent’s website offering cutting and drilling tools. The website noticeably displayed the Complainant’s Trade Marks and trade name, and claimed to be affiliated with or endorsed by the Complainant. The website did not accurately or prominently disclose the lack of a commercial relationship between the Complainant and the Respondent. Instead, the content of the website suggested that the Respondent is a representative of the Complainant. Without the appropriate disclaimers, users would have easily been led to believe that the Respondent’s website was operated by the Complainant or with its permission. Therefore, the facts do not support a claim of fair use under the “Oki data test”. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Such conduct by the Respondent does not represent a bona fide offering of goods or services or support a recognition of a legitimate claim to the disputed domain name. The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, nor of any other circumstances giving rise to rights or legitimate interests in the disputed domain name. Moreover, the disputed domain name carries a risk of implied affiliation or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Pursuant to the Policy, the Panel has not found any evidence to suggest that the Respondents have any rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s SANDVIK Trade Marks are widely and extensively registered and used around the world, including in China. The disputed domain name was registered well after the first registration of the Complainant’s SANDVIK trade mark and long after Sandvik AB began operations. The term “sandvikcn” has no meaning in the Chinese language or any other apparent meaning.
In the past, the disputed domain name redirected users to a website offering cutting and drilling tools under the Complainant’s Trade Marks. The choice of the disputed domain name coupled with the content of the website suggested an affiliation with the Complainant. No express disclaimer explaining the lack of a relationship between the Complainant and the Respondent appeared on the website. The Panel is satisfied that the Respondent had “intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.” See paragraph 4(b)(iv) of the Policy.
The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This change of use does not alter the Panel’s finding of bad faith use, but in fact reinforces the view that the Respondent is trying to prevent the Complainant from reflecting the mark in a corresponding domain name or for the purpose of disrupting the business of the Complainant.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
Taking into account all the circumstances of the case, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name, and by taking into account the past misuse as well as the current acts of the Respondent, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of 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 <sandvikcn.com> be transferred to the Complainant.
Date: May 17, 2019