WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Talanx AG v. 赵海 (Hai Zhao)
Case No. D2020-1050
1. The Parties
The Complainant is Talanx AG, Germany, represented by Deloitte Legal Rechtsanwaltsgesellschaft mbH, Germany.
The Respondent is 赵海 (Hai Zhao), China.
2. The Domain Name and Registrar
The disputed domain name <talanx.icu> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 5, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on May 6, 2020. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2020.
The Center appointed Douglas Clark as the sole panelist in this matter on June 24, 2020. 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, Talanx AG, is a stock corporation headquartered in Hannover, Germany. It is part of the Talanx Group, one of the major European insurance groups that has subsidiaries in various countries and employees around the world. The Talanx Group is active on five continents and in more than 150 countries, and it has presence in China, where the Respondent is based.
The Complainant has been operating worldwide under the name “Talanx” since 1998. It uses the respective TALANX trademarks as a distinctive sign for its entire range of goods and services as well as its company name. The Complainant is the owner of various TALANX trademarks worldwide, including the relevant German TALANX trademark No. DE39924539 registered on July 15, 1999 in classes 16 and 36; European Union TALANX trademark No. 003250966 registered on November 24, 2004 in classes 16, 35 and 36; and International TALANX. REINSURANCE BROKER trademark No. 1082421 registered on April 8, 2011 which, inter alia, designates China in classes 16, 35 and 36.
The Complainant owns numerous domain names incorporating the trademark TALANX, e.g., <talanx.com>, <talanx.de>, <talanx.net> and <talanx.asia>.
The Respondent is the registrant of the disputed domain name <talanx.icu>.
The disputed domain name was registered on August 16, 2019 and does not at the date of this decision resolve to an active webpage. According to the evidence provided by the Complainant, the website under the disputed domain name previously resolved to a page displaying pay-per-click links related to pornography and gambling.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant contends that the disputed domain name <talanx.icu> is identical to the TALANX trademark because the disputed domain name includes the entirety of the Complainant’s TALANX trademark and the generic Top-Level Domain (“gTLD”) name “.icu” is not to be taken into account when assessing issues of identity or confusing similarity.
No rights or legitimate interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant claims that it holds well-established rights in the TALANX trademark for more than 20 years, long preceding the date of registration of the disputed domain name. The Complainant asserts that the Respondent was aware of the Complainant’s famous TALANX trademark when he registered the disputed domain name.
The Complainant contends that it has never authorized the Respondent to use its TALANX trademark in any way. There is no resemblance between the Respondent’s name and the term “Talanx” and is no evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant asserts that the Respondent has registered the disputed domain name to disrupt the business of the Complainant and with the intent to gain commercially from Internet users looking for the Complainant and/or with the intent to tarnish the Complainant’s trademark. Given that the disputed domain name resolves to a website with pay-per-click-links containing sexually explicit content, it is clear that such a use cannot be seen as legitimate noncommercial use. By attempting to confuse Internet users by attracting them to a website to gain “click-through” revenue implies improper use of the Complainant’s mark for commercial purposes.
Registered and used in bad faith
The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith.
The Complainant claims that its TALANX trademark is so internationally famous that a simple cursory Internet or trademark search and/or a search for other TLD registrations using “talanx” would immediately notify the Respondent of the Complainant’s rights in the mark. Therefore, the Respondent must have been well aware of the Complainant’s business and TALANX trademark when registering the disputed domain name. The Complainant further contends that the notoriety of the TALANX trademark makes it highly unlikely that the Respondent would have chosen to register the disputed domain name randomly without knowledge of the Complainant’s rights in the mark prior to acquiring the disputed domain name.
The Complainant asserts that by redirecting the disputed domain name to a pay-per-click parking website with advertising for sexually explicit content, i.e., to derive traffic based on Internet user confusion for the Respondent’s own commercial gain, must be considered as bad faith.
The Complainant contends that the Respondent intentionally attempts to attract Internet users to the respective online location, by creating a likelihood of confusion with the Complainant’s mark as to the source or affiliation of the Respondent’s website or location for commercial gain. Further, the Complainant asserts that the Respondent’s non-response to the warning letter sent by the Complainant dated February 3, 2020 is a further indication of 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 is Chinese.
The Complainant requested the language of the proceeding be in English on the grounds that (i) the Complainant is not familiar with the Chinese language; (ii) conducting the proceeding in the Chinese language would be a disadvantage to the Complainant as it would have to incur substantial added expense and inconvenience in getting the papers filed translated into Chinese; and (iii) the administrative proceeding would be unduly delayed.
The Respondent did not respond to this request.
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 Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
The Respondent did not respond to the Center’s preliminary determination.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel finds the disputed domain name <talanx.icu> is identical or confusingly similar to the Complainant’s mark because the disputed domain name incorporates the Complainant’s TALANX trademark in full. The gTLD “.icu” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
The Panel finds that the Respondent could not have chosen and registered the disputed domain name in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide.
The Complainant’s TALANX trademarks have been used in commerce for many years. The disputed domain name was registered many years after the Complainant had started using the TALANX trademark. Therefore, the Respondent should have knowledge of the Complainant’s trademarks and business. It appears to the Panel that the Respondent has registered the disputed domain name <talanx.icu>, in order to create an association with the Complainant as a means of attracting users to the resolved website.
The disputed domain name did for some time resolve to a webpage that contains pay-per-click links related to sexual and gambling content, suggesting the disputed domain name was being used to attract consumers to the page for potential commercial gain.
In any event, the fact that the disputed domain name does not currently resolve to an active page does not preclude a finding that it has been used in bad faith under the circumstances of this case. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding (WIPO Overview 3.0, section 3.3). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s mark in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore 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 <talanx.icu> be transferred to the Complainant.
Date: July 8, 2020