WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schneider Electric Japan Holdings Ltd. v. 刘小平 (Liu Xiao Ping), 广州正凌自动化科技有限公司 (Guang Zhou Zheng Ling Zi Dong Hua Ke Ji You Xian Gong Si)
Case No. D2021-1801
1. The Parties
The Complainant is Schneider Electric Japan Holdings Ltd., Japan, represented by Nameshield, France.
The Respondent is 刘小平 (Liu Xiao Ping), 广州正凌自动化科技有限公司 (Guang Zhou Zheng Ling Zi Dong Hua Ke Ji You Xian Gong Si), China.
2. The Domain Name and Registrar
The disputed domain name <profaec.com> 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 June 8, 2021. On June 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2021, 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 June 10, 2021 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 June 10, 2021.
On June 10, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 10, 2021, the Complainant submitted 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 June 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on July 19, 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 is a global supplier of industrial automation hardware and software solutions. Its principal products include the Pro-Face branded operator interfaces, HMI software, and industrial computers.
The Complainant operates and sells its products under the PRO-FACE and PROFACE marks (collectively referred to as the “PROFACE mark”). The Complainant owns several trade mark registrations that incorporate the element “proface”, including the European Union Trade Mark Registration No. 000899740 for PRO-FACE registered on February 10, 2000, in classes 9 and 37 and International Trademark Registration No. 1141195A for PROFACE registered on August 17, 2012, designating Japan in classes 9 and 10.
The Complainant is also the owner of the domain name <proface.com> registered on June 4, 1996.
The disputed domain name was registered on March 29, 2017. According to the evidence provided by the Complainant, the disputed domain name previously resolved to a website of 广州凌控 (LK Automation Limited) with English content, and purportedly selling Proface branded products. However, at the time of this decision, the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its PROFACE mark. The inversion of the letters, “c” and “e”, in the PROFACE mark is not sufficient to escape the finding that the disputed domain name is confusingly similar to the PROFACE mark, and is a clear case of typosquatting. The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” does not change the overall impression of the designation as being connected to the PROFACE mark.
The Complainant further alleges that the Respondent is not commonly known by the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant in any way. The Respondent has no rights or legitimate interests in respect of the disputed domain name. Neither a license nor authorization has been granted by the Complainant to the Respondent to make any use of the PROFACE mark or apply for registration of the disputed domain name. The Complainant further claims that the disputed domain name is a typosquatted version of the PROFACE mark. It is an attempt to take advantage of Internet user’s typographical errors and evidences the lack of rights and legitimate interests in the disputed domain name.
The Complainant finally asserts that inclusion of a misspelled version of the PROFACE mark is intentionally designed to be confusingly similar with the Complainant’s mark and its official website. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating likelihood of confusion with the Complainant’s trade mark and official domain name and profit from the Complainant’s reputation. The Complainant finally contends that the Respondent had knowledge of the Complainant’s
rights prior to the registration of the disputed domain name, which is a hallmark of bad faith.
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.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) English language is the language most widely used in international relations and is one of the working languages of the Center;
(b) the disputed domain name is formed by words in Roman characters and not in Chinese script; and
(c) the Complainant would have had to retain specialized translation services at a cost very likely to be higher than the overall cost of these proceedings in order to proceed in Chinese. The use of Chinese in this case would therefore impose a burden on the Complainant which must be deemed significant in view of the low cost of these proceedings.
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 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 based in Japan. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of Roman letters for the disputed domain name and the English content of the webpage under the disputed domain name, indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.
The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the PROFACE mark.
The Panel notes the disputed domain name is comprised of the same letters as the PROFACE mark but with the letters, “c” and “e” inverted. The misspelling does not preclude a finding of confusing similarity between the PROFACE mark and the disputed domain name. In cases where a domain name consists of a common, obvious, or intentional misspelling of a trade mark, the domain name will normally be considered confusingly similar to the relevant mark for purposes of UDRP standing. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); Mediarex Enterprises Limited v. Yong Woon Chin, Webolutions, WIPO Case No. DCO2020-0014.
Further, it is permissible for the Panel to ignore the gTLD suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, 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 PROFACE mark, 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 name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain name or reasons to justify the choice of the misspelled version of the PROFACE mark. There is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent any license or authorization to use the Complainant’s PROFACE mark or register the disputed domain name.
The Panel notes that the disputed domain name previously resolved to a website in English which allegedly offered Proface branded goods for sale. The website displayed the Complainant’s PROFACE mark but did not accurately and prominently disclose a lack of a relationship between the Complainant and the Respondent. 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.
None of the circumstances in paragraph 4(c) of the Policy are present in this case. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainant’s PROFACE mark was registered and used well before the registration of the disputed domain name. Search results using the key word “proface” on the search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the PROFACE mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s PROFACE mark when registering the disputed domain name or has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai, WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes, WIPO Case No. D2011-0874.
The Panel notes that the disputed domain name previously resolved to a website allegedly offering the Proface branded products for sale without any disclaimer and displaying the PROFACE mark. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s PROFACE mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This demonstrates bad faith registration and use of the disputed domain name, as provided in paragraph 4(b)(iv) of the Policy.
In addition, the Panel finds that the current inactive use of the disputed domain name in this case would not prevent a finding of bad faith under the doctrine of passive holding. In its determination, the Panel considered the degree of distinctiveness and reputation of the Complainant’s PROFACE mark, as well as the Respondent’s failure to respond in the face of the Complainant’s allegations of bad faith. See section 3.3 of the WIPO Overview 3.0.
Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds 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 <profaec.com> be transferred to the Complainant.
Date: August 2, 2021