WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crestron Electronics, Inc. v. bei jing kuai si chuang jie ke ji you xian gong si an hui fen gong si

Case No. D2020-2084

1. The Parties

The Complainant is Crestron Electronics, Inc., United States of America (“USA”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is bei jing kuai si chuang jie ke ji you xian gong si an hui fen gong si, China.

2. The Domain Names and Registrars

The disputed domain name <crestron-china.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name <crestron-cn.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrars”).

3. Procedural History

The Complaint in English involving the disputed domain name <crestron-china.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2020. On August 6, 2020, the Center transmitted by email to the Registrar Chengdu West Dimension Digital Technology Co., Ltd. a request for registrar verification in connection with the disputed domain name <crestron-china.com>. On August 7, 2020, the Registrar Chengdu West Dimension Digital Technology Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 11, 2020, the Complainant filed an amended Complaint in English requesting to add the disputed domain name <crestron-cn.com>. On August 11, 2020, the Center transmitted by email to the Registrar Alibaba Cloud Computing (Beijing) Co., Ltd. a request for registrar verification in connection with the disputed domain name <crestron-cn.com>. On August 12, 2020, the Registrar Alibaba Cloud Computing (Beijing) Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On August 7, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 11, 2020, 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 August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2020.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 23, 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.

On September 28, 2020, the Respondent sent a supplemental filing in Chinese and English via email, which the Center forwarded to the Panel on the same day.

4. Factual Background

The Complainant is a multinational company headquartered in the USA which manufactures and distributes audiovisual, automation and integration equipment. The Complainant has large international business operations, with office locations throughout the world, including in Singapore, Hong Kong, China, Canada, Europe, Australia, New Zealand, and India. The Complainant works with a global network of partners to distribute and resell its products to consumers around the world. For the Respondent’s home jurisdiction China particularly, in January 2017, the Complainant appointed Shanghai Golden Bridge InfoTech Co., Ltd. (上海金桥信息股份有限公司) (“Shanghai Golden Bridge”) as its exclusive distributor, which does business as, and is generally known as “Crestron China”.

The Complainant owns a portfolio of trademarks protecting CRESTRON (word and device marks), including, amongst others, the following trademark registrations: USA trademark registration No. 1324244, registered on March 12, 1985 and Chinese trademark registration No. 1421788, registered on July 14, 2000.

The disputed domain names were created on, respectively, February 14, 2012 (<crestron-china.com>) and September 19, 2019 (<crestron-cn.com>). The Complainant provides evidence that they are both linked to active webpages, both containing information regarding the Respondent’s business operations and offering CRESTRON-branded products for sale, without the authorization of the Complainant.

The Complainant also submits evidence that it attempted to resolve the dispute regarding the disputed domain name <crestron-china.com> amicably through multiple cease-and-desist letters sent to the Respondent on February 28, 2020, on March 4, 2020, and on March 9, 2020. On March 10, 2020, the Respondent responded to the Complainant’s cease-and-desist letters in English, essentially rejecting the Complainant’s demands, stating that it owns the disputed domain name <crestron-china.com> based on the "first application, first registration" (sic.) principle, and expressing doubt about the Complainant’s trademark rights in the disputed domain name <crestron-china.com> and about the authority of the Complainant’s representative to act on the Complainant’s behalf. After this reply, the Respondent refused to respond to further communications sent to it by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain names are confusingly similar to its trademarks for CRESTRON, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

The Complainant claims that its trademarks are distinctive and used intensively, and submits advertising materials, information regarding its business operations and information regarding various international awards that it has recently won. The Complainant particularly argues that there are no justifications for the use of its trademarks in the disputed domain names, and contends that the use of the disputed domain names and its trademarks (including in the disputed domain names’ meta data) to offer competing products, which risk being counterfeit products, does not confer any rights or legitimate interests in respect of the disputed domain names, and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not file a formal response to the Complainant’s contentions.

However, on September 28, 2020, the Respondent sent an unsolicited supplemental filing in Chinese and English via email, in which it essentially contends that the Complainant has not registered trademarks for all goods and services in the USA or China, and that both the Respondent’s business and the content published on the website linked to the disputed domain name is very extensive, going far beyond the scope of registration of the Complainant’s trademarks.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

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 states that, to the best of its knowledge, the language of both Registration Agreements is Chinese, but nevertheless filed its Complaint in English, and requested that the language of the proceeding be English. The Respondent did not comment on the language of the proceeding and did not provide any reply on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant's request that the language of the proceeding be English; the Respondent’s lack of comments on the language and on the merits of this administrative proceeding; the fact that on March 10, 2020, the Respondent responded in English to the Complainant’s cease-and-desist letters and that the Respondent sent its supplemental filing of September 28, 2020 in English and Chinese, from which the Panel deducts that the Respondent is able to understand and communicate in English; and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the administrative proceeding shall be English.

6.2 Admissibility of the supplemental filings by the Respondent

Regarding the admissibility of the Respondent’s supplemental filing, the Rules grant the Panel sole discretion to determine the admissibility of unsolicited supplemental filings. The consensus opinion of administrative panels on this issue, set out in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states as follows:

“Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition. Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case. Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. On receipt of a request to submit an unsolicited supplemental filing or the actual receipt of such filing, the WIPO Center will confirm receipt of the request or filing to the parties, and forward such request or filing to the panel for its consideration as to admissibility. In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).”

The Panel finds that the Respondent’s supplemental filing is relevant to the case, and that, given the fact that the Respondent did not file a formal, timely reply in this administrative procedure, admitting its supplemental filing would be equitable, and would respect its right of defense and rebuttal. The Panel therefore admits the Respondent’s supplemental filing into the proceeding. The supplemental filing has been considered and taken into account by the Panel in reaching this decision.

6.3. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are 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 shown that it has valid rights in the sign CRESTRON based on its intensive use and registration of the same as a trademark in several jurisdictions, incidentally commencing several years prior to the registration of the disputed domain names.

Moreover, as to confusing similarity, the disputed domain names consist of two components, namely, each time the Complainant’s registered trademark for CRESTRON, combined with a hyphen, followed by the country name “China”, or by the common abbreviation of the country name China, namely “cn”. The Panel refers to the WIPO Overview 3.0, section 1.8, which states: “Where the relevant trademark is recognizable within the disputed domain names, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain names contain the entirety of the Complainant’s trademarks, which remain easily recognizable. The addition of the geographical terms “China” or “cn” does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademark.

Regarding the Respondent’s argument in its supplemental filing, in which it essentially contends that the Complainant did not register its trademarks for all, or for sufficient goods and services covering the Respondent’s full scope of business, or scope of use of the disputed domain name, the Panel refers to the WIPO Overview 3.0, section 1.1.2, which states: “the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test.”

Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain names and is not making legitimate noncommercial use or fair use of the Complainant's trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Upon review of the websites hosted at the disputed domain names, the Panel notes that the disputed domain names direct to active webpages, clearly displaying the Complainant’s well-known logo trademark CRESTRON in large font on the home pages linked to the disputed domain names, and offering CRESTRON-branded products, which the Complainant states might be counterfeit products, for sale without the authorization of the Complainant. The Panel concludes that these elements show the Respondent’s intention to divert consumers for commercial gain to its website, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for CRESTRON.

Furthermore, the Panel notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademarks, and containing the Complainant’s registered trademark combined with a geographical term, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1).

Finally, the Panel has also reviewed the Respondent’s reply to the Complainant of March 10, 2020, even though the Respondent did not submit any timely formal reply in this administrative proceeding. The Panel notes but does not agree with the Respondent’s main argument in its communication to the Complainant that the Respondent would own the disputed domain names based on the "first application, first registration" (sic.) principle. This is not a principle applicable in determining the current domain name proceeding. The Panel refers in this regard to the settled view of UDRP panels applying the Policy that the mere registration of a domain name is not sufficient to establish rights or legitimate interests in such domain name (see in this regard for instance National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 and N.C.P. Marketing Group, Inc. v. Entredomains, WIPO Case No. D2000-0387).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel considers that the registration of the disputed domain names, which are confusingly similar to the Complainant’s well-known trademarks, was clearly intended to mislead and divert consumers to the disputed domain names. Given the distinctiveness and fame of the Complainant’s trademarks, and the fact that the Complainant’s exclusive distributor for China is generally known under the disputed domain names, the Panel holds that the registration of the disputed domain names, targeting the Complainant’s well-known trademark and the name of its exclusive distributor in China, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant already owned registered trademarks in CRESTRON and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names.

As to use of the disputed domain names in bad faith by the Respondent, the websites linked to the disputed domain names are currently used to sell and promote the Respondent’s CRESTRON-branded products, which are passed off as the Complainant’s products, and may be counterfeit products according to the Complainant. The Panel also notes that such websites clearly display a large image of the Complainant’s well-known logo trademark CRESTRON on the home page, and also use the CRESTRON mark throughout the rest of the website. Moreover, the Respondent has also used the Complainant’s Chinese trademark for CRESTRON (namely “快思聪”) in the metadata for those websites, without the authorization of the Complainant. The Panel concludes that this means that the Respondent intentionally attracts Internet users for commercial gain to the disputed domain names, by creating consumer confusion between the disputed domain names and the Complainant’s trademarks and by passing off its products as products manufactured and distributed by the Complainant or its authorized distributors. The Panel accepts that this is clear evidence that the Respondent is using the disputed domain names in bad faith.

Finally, regarding the Respondent’s argument in its supplemental filing, in which it essentially contends that the Complainant did not register its trademarks for all, or for sufficient goods and services covering the Respondent’s full scope of business or scope of use of the disputed domain name, the Panel does not agree with this argument. First, upon review of the websites linked to the disputed domain names, it is clear that devices are offered for sale that fall within the protection scope of Nice Class 9, for which the Complainant has trademark registrations in several jurisdictions, including the Respondent’s home jurisdiction China. Secondly, the Panel refers to the above findings which establish the Respondent’s clear bad faith in registering and using the disputed domain names.

The Panel concludes from the foregoing that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

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 names <crestron-china.com> and <crestron-cn.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: October 7, 2020