WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Geberit Holding AG v. sifenchen, Chaoan Guxiang Geberit Sanitery Ware Fitting Factory

Case No. DCC2019-0007

1. The Parties

The Complainant is Geberit Holding AG, Switzerland, represented by Pinsent Masons LLP, United Kingdom.

The Respondent is sifenchen, Chaoan Guxiang Geberit Sanitery Ware Fitting Factory, China.

2. The Domain Name and Registrar

The disputed domain name <geberit.cc> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2019. On July 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 July 22, 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 July 23, 2019.

On July 22, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On July 23, 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 July 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2019.

The Center appointed Sok Ling Moi as the sole panelist in this matter on August 28, 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

The Complainant, part of the Geberit Group headquartered in Switzerland, is a public limited company organised under Swiss law. The Geberit Group specialized in manufacturing and supplying sanitary parts and related bathroom products and systems, with 29 production facilities within its production network. The Geberit Group employs around 12,000 people in around 50 countries worldwide, and generated sales revenue of CHF 3.1 billion in 2018.

The Complainant has used GEBERIT as its company name and business identifier since 1953 when it first registered GEBERIT as a trade mark. The Complainant is the proprietor of the following trade mark registrations for GEBERIT:

Jurisdiction

Trade Mark

Registration No.

Registration Date

Class

International designating Australia, United States of America (“USA”), European Union, China, etc.

GEBERIT

878950

February 9, 2006

11

International designating Australia, USA, European Union, China, etc.

GEBERIT

571872

May 6, 2011

6, 9, 11, 17, 19

International designating China

吉博力

655359

March 28, 1996

6, 9, 11, 17, 37, 41, 42

The Complainant operates an official website at “www.geberit.com” to provide information about its business and products.

The disputed domain name <geberit.cc.com> was registered by the Respondent on January 11, 2011. The disputed domain name resolves to a website which purports to offer for sale bathroom products and accessories by a company named “Geberit (Hong Kong) Water Saving Science & Technology Co., Ltd”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Complainant has neither licensed nor otherwise authorized the Respondent to use its trade mark. The Complainant contends that as the Respondent is using the disputed domain name to publish to a website purportedly offering for sale bathroom products and accessories without the Complainant’s consent, such use constitutes an infringement of the Complainant’s registered trade mark rights and cannot be bona fide. The Complainant therefore claims that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant contends that the disputed domain name is used to create confusion and unfairly exploit the value of the Complainant’s trade mark. The Complainant therefore claims that the Respondent has registered and is using the disputed domain name in bad faith.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain name is registered in Latin characters, rather than Chinese script; and

(b) the contents of the website to which the disputed domain name resolves are in English;

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be re-filed in Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Finding

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in GEBERIT by virtue of its use and registration of the same as a trade mark.

The disputed domain name incorporates the Complainant’s trade mark GEBERIT in its entirety. The addition of the country code Top-Level Domain (“gTLD”) “.cc” (for Cocos Island) does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark in this case.

Consequently, the Panel finds that the disputed domain name is identical with the Complainant’s trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proof to establish that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence in support of its rights or legitimate interests in the disputed domain name. The respondent may establish its rights in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the GEBERIT trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or have acquired any trade mark rights in the term “geberit”.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which purported to sell bathroom products and accessories. The website states that “Geberit (Hong Kong) Water Saving Science & Technology Co., Ltdis a leading enterprise of sanitary ware technology market integrated with R&D, production and sales, whose business is all over the world. Geberit has always played a pioneering role in the industry with comprehensive system solution, continuously creates and leads the trend of industry.” This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to come forward with evidence of their rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the Panel determines that the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.

The Complainant has registered GEBERIT as a trade mark and used it as a business identifier since 1953. The Complainant and its trade mark enjoy a strong reputation worldwide. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the GEBERIT trade mark and its extensive use by the Complainant. As such, there is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain name. The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s products to its own website for financial gain.

According to the evidence submitted by the Complainant, the Respondent was using the disputed domain name to publish a website which purported to sell bathroom products and accessories. The website represents that the products are supplied by company named “Geberit (Hong Kong) Water Saving Science & Technology Co., Ltd”. This suggests that the Respondent is using the disputed domain name to mislead Internet visitors by creating an affiliation with the Complainant where there is none.The failure of the Respondent to display a clear disclaimer of a lack of relationship between the Respondent and the Complainant on its website is indicative of bad faith.

The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel is satisfied that the Respondent is using the disputed domain name for mala fide purposes and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Such use of the disputed domain name not only misleads the public but also causes disruption to the Complainant’s business. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iii) of the Policy are also applicable to the present case.

The Center was not able to reach the Respondent at the facsimile numbers and physical address recorded with the Registrar, which may suggest that the Respondent had provided false contact details at the time of registering the disputed domain name.

The Respondent has not denied the Complainant’s allegations of bad faith. In view of the above finding that the Respondent does not have rights or legitimate interests in the disputed domain name, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of 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 name <geberit.cc> be transferred to the Complainant.

Sok Ling Moi
Sole Panelist
Date: September 29, 2019