WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lapp Holding AG v. 蒋琴仙 (Jiang Qin Xian), 艾斯凯博电缆（上海）有限公司 (Ai Si Kai Bo Dian Lan (Shang Hai) You Xian Gong Si)
Case No. D2020-2896
1. The Parties
The Complainant is Lapp Holding AG, Germany, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 蒋琴仙 (Jiang Qin Xian), 艾斯凯博电缆（上海）有限公司 (Ai Si Kai Bo Dian Lan (Shang Hai) You Xian Gong Si), China.
2. The Domain Name and Registrar
The disputed domain name <lappkabel.net> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2020. On November 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2020, 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 November 29, 2020, 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 in English on December 2, 2020.
On November 29, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 2, 2020, the Complainant submitted a 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 December 8, 2020. In accordance with paragraph 5 of the Rules, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2020.
The Center appointed Joseph Simone as the sole panelist in this matter on January 28, 2021. 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, Lapp Holding AG, operates as a holding company and the parent company of companies within the Lapp Group (“Lapp”). Based in Stuttgart, Lapp is a provider of integrated solutions and branded products in the field of cable and connection technology. Lapp’s products include cables and flexible lines, industrial connectors and screw connection technology, individual assembly solutions, automation technology, robotics solutions and technical accessories.
Lapp delivers its 40,000 products to every corner of the world, with most ready to be delivered quickly off the shelf. Lapp has 51 sales offices and around 100 national distribution partners all over the globe. With a global workforce of 4,650 people, Lapp generated more than 1.2 billion euros in turnover in the past year.
Lapp entered China and set up representative offices in Beijing and Shanghai in 1999. In 2003, Lapp Cable (Shanghai) Co., Ltd. was established and tasked with the promotion of Lappcables in China. In addition to the Shanghai headquarters, Lapp China currently has branches in Suzhou, Taicang, Shenyang, Beijing, Wuhan, Tianjin, Guangzhou, Qingdao, and Shenzhen.
The Complainant, through its subsidiary U.I.LAPP GMBH, has an extensive global trademark portfolio of the LAPP KABEL trademarks, which include the following:
- China Trade Mark Registration No. 3897615 LAPP KABEL in Class 9, registered on May 7, 2006;
- Australia Trade Mark Registration No. 543665 figurative mark in Class 9, registered on October 8, 1990;
- International Trade Mark Registration No. 455030 figurative mark in Class 9, registered on August 8, 1980.
The disputed domain name was registered on December 11, 2019.
At the time of filing the Complaint, the Complainant asserted that the disputed domain name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant asserts that it has prior rights in the LAPP KABEL trademarks and that it is a leading player in its fields of business.
The Complainant further notes that the disputed domain name registered by the Respondent is identical or confusingly similar to the Complainant’s LAPP KABEL trademarks, and the addition of the generic Top-Level Domain (“gTLD”) “.net” does not affect the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
The Complainant asserts that it has not authorized the Respondent to use the LAPP KABEL mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Indeed, the Complainant asserts that the Respondent is passively holding the disputed domain name and that there is no plausible good faith reason or logic for the Respondent to have registered the disputed domain name, especially after considering the attendant circumstances, any use of the disputed domain name whatsoever, whether actual or theoretical, would have been in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Language of the Proceedings
In accordance with paragraph 11 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.”
In this case, the language of the Registration Agreement for the disputed domain name is in Chinese. Hence, the default language of the proceeding should be in Chinese.
However, the Complainant filed the Complaint in English, and requested that English be the language of the proceeding, asserting that, mainly:
- The disputed domain name entirely consists of words in Latin script;
- The Complainant is not familiar with the Chinese language and conducting the proceeding in Chinese would result in substantial additional expense; and
- The term LAPP KABEL, which solely constitutes the disputed domain name, does not carry any specific meaning in the Chinese language.
The Respondent was notified in both Chinese and English of the language of the proceeding and the Complaint and did not object to doing so or submit any further formal response.
Accordingly, the Panel has determined that the language of the proceeding shall be in English, and the Panel has issued this decision in English.
B. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the LAPP KABEL trademark in many territories around the world.
Disregarding the “.net” gTLD, the disputed domain name incorporates the LAPP KABEL trademark in its entirety. Thus, the disputed domain name should be regarded as identical to the Complainant’s LAPP KABEL trademark.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the LAPP KABEL trademark and in showing that the disputed domain name is identical or confusingly similar to its mark.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
The Complainant has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
Thus, the Complainant has established its prima facie case with sufficient evidence.
The Respondent did not file a formal response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. As such, the Panel concludes that the Respondent failed to rebut the Complainant’s prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name, and that none of the circumstances of paragraph 4(c) of the Policy is evident in this case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent should have been aware of the Complainant’s marks when registering the disputed domain name, given the extensive prior use and fame of these marks.
When the Respondent registered the disputed domain name in December 2019, the LAPP KABEL trademarks had already been widely known and was directly associated with the Complainant’s activities.
The Respondent has provided no evidence to justify his registration of the disputed domain name. Given the foregoing, it would be unreasonable to conclude that the Respondent – at the time of the registration of the disputed domain name – was unaware of the Complainant’s trademark, or that the Respondent’s adoption of the uncommon and distinctive name “LAPP KABEL” was a mere coincidence.
Ultimately, the Complainant’s registered trademark rights in LAPP KABEL for its signature products and services predate the registration date of the disputed domain name by almost four decades. A simple search on Baidu against the term “LAPP KABEL” would have no doubt revealed that it is a world-renowned brand.
The Panel is therefore of the view that the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademark rights and with the intention of taking advantage of the fame and reputation of the Complainant’s trademark. In doing so, the Respondent has created a likelihood of confusion with the Complainant’s trademark and potentially deprived the Complainant of the opportunity to offer its products to prospective customers through the disputed domain name.
It is true that at present the disputed domain name does not resolve to any active webpage; but the consensus view among UDRP panels is 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. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See section 3.3 of the WIPO Overview 3.0. In this case, the overall circumstances strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith.
The Panel therefore finds that the disputed domain name was 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 <lappkabel.net> be transferred to the Complainant.
Date: February 9, 2021