WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suning Commerce Group Co. Ltd. (苏宁云商集团股份有限公司)and Suning International Services v. unknown unknown, delemo Mobile Solutions

Case No. DEU2017-0002

1. The Parties

The Complainants are Suning Commerce Group Co. Ltd. (苏宁云商集团股份有限公司) (the "First Complainant") of Najing, China and Suning International Services (the "Second Complainant") of Paris, France, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is unknown unknown, delemo Mobile Solutions of Hildesheim, Germany.

2. The Domain Name, Registry and Registrar

The disputed domain name is <suning.eu>. The Registry of the disputed domain name is the European Registry for Internet Domains ("EURid" or the "Registry"). The Registrar of the disputed domain name is Mesh Digital Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2017. On July 3, 2017, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On July 4, 2017, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the "ADR Rules") and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the "Supplemental Rules").

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2017. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was August 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 22, 2017.

The Center appointed Adam Taylor as the sole panelist in this matter on September 4, 2017. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The First Complainant was incorporated in China in 1990 and, since then, has traded under the name "Suning" as well as its Chinese-character equivalent. The Second Complainant was incorporated in France on March 3, 2017, and is ultimately wholly owned by the First Complainant.

The First Complainant currently operates some 1,600 "high-end" retail stores in China, Hong Kong, China and Japan, offering a wide range of electronics, appliances and general merchandise. It also runs a (Chinese language) e-commerce website at "www.suning.com". According to website analytics supplied by the Complainant, there were some 12.97 million visits to the website in the six months to May 2017.

In 2016, the First Complainant's revenue was over CNY 148 million and it was named as one of the world's "Top 10 Largest Retailers" and "Top 10 E-Commerce Players" by Digital Commerce 360 and Deloitte, respectively.

On June 6, 2016, the First Complainant acquired a majority stake in Italian football club Inter Milan for EUR 270 million.

The First Complainant owns International Trade Mark No. 883740 for the stylized word "SUNING" in classes 7, 9, 11, 35 and 37, designated in the European Union ("EU") with a designation and registration date of March 28, 2006.

On April 3, 2017, the Second Complainant applied for an EU Trade Mark for the stylized word "SUNING" in classes 1-45.

The disputed domain name was registered on October 10, 2007.

As of July 30, 2013, the disputed domain name resolved to a webpage with a notice in German, said to have been written by "D.[…] L Montanaro". He stated that he had been self-employed since 2005, that he sold IT hardware and software as well as Internet services and invited contact via a phone number in Germany as well as via a "delemo.de" email address.

Archive screenshots from 2014 and 2016 simply resolved to a brief "under construction" pages.

Currently the disputed domain name is not being used in connection with an active website.

The Respondent did not respond to cease and desist notices sent on behalf of the First Complainant on May 31, 2017, and on June 7, 2017 and June 30, 2017.

5. Parties' Contentions

A. Complainant

The following is a summary of the Complainants' contentions. (The Complainants are collectively referred to below as "the Complainant" unless there is a reason to refer to them separately.)

The disputed domain name is identical or confusingly similar to the Complainant's trade marks.

The disputed domain name is identical and/or confusingly similar to the Complainant's registered trade marks. The domain name suffix can be disregarded.

The disputed domain name is confusingly similar to the Complainant's trade name.

The Respondent lacks rights or legitimate interests in the disputed domain name.

The Complainant's registered trade marks are prima facie evidenceof the Complainant's trade mark rights and its exclusive right to use the mark in connection with the goods and services specified. The burden of proof shifts to the Respondent to show that it has relevant rights.

There is nothing in the WhoIs information for the disputed domain name which indicates that the Respondent is commonly known by the disputed domain name and the Respondent is not authorized to register or use a domain name incorporating the Complainant's trade mark.

The Respondent's lack of active use of the disputed domain name is evidence of a lack of rights or legitimate interests in the disputed domain name.

The Respondent registered and/or used the disputed domain name in bad faith.

The Respondent registered the disputed domain name in 2007, significantly later than the Complainant's first use of the trade mark in 1990 and also after registration of the Complainant's trade mark in the EU in 2006.

The Complainant and its trade mark are well known internationally. It owns registered trade marks in many countries.

At the time of registration of the disputed domain name, the Respondent, a provider of mobile solution services, knew or should have known of the existence of the Complainant's trade marks. The term "suning" has no meaning other than in reference to the Complainant and its business – in either English or German.

While constructive notice may sometimes alone be regarded as insufficient to constitute bad faith, numerous panels have held that a respondent should be treated as having actual notice where a complainant's mark is well-known, as here.

Passive holding can be a factor in finding bad faith registration or use in bad faith. Paragraph 11(f)(2)(ii) of the ADR Rules provides that lack of relevant use for at least two years following registration constitutes bad faith.

Here the Respondent has made no active use of the disputed domain name since before or after the notice posted on the website at the disputed domain name in 2013.

The Respondent is using the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant.

There is no plausible good faith reason for the Respondent to have registered the disputed domain name. The only explanation is that the Respondent intends to cause confusion. Any active use of the disputed domain name could only be in bad faith.

The Respondent's failure to respond to the Complainant's cease and desist letter is further evidence of bad faith.

It is more likely than not that the Respondent knew of and targeted the Complainant's trade mark.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

Article 21(1) of Regulation (EC) No. 874/2004 ("the Regulation") states that "[a] registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that [domain] name is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or Community law, such as the rights mentioned in Article 10(1)".

Article 10(1) of the Regulation refers to, inter alia: "registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names(…)".

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be "identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law".

In the Panel's view, it is arguable that on its own the pending application by the Second Complainant for an EU trade mark does not qualify as a relevant right in line with the Regulation and the ADR Rules.

However, it is not necessary to come to a conclusion on this as the First Complainant has established rights under Article 21(1) and Paragraph B(11)(d)(1)(i) of the ADR Rules by virtue of its international trade mark designating the EU.

The disputed domain name is confusingly similar to this trade mark, which comprises the stylized term "suning".

The Panel therefore finds that the Complainant has established the first element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(i) of the ADR Rules.

B. Rights or Legitimate Interests

Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (a) lack of rights or legitimate interests and (b) registration or use in bad faith are alternative requirements. For reasons explained below, the Panel considers that the disputed domain name has been registered in bad faith and so there is no need to separately address lack of rights or legitimate interests.

C. Registered or Used in Bad Faith

For the following reasons, the Panel considers that the disputed domain name has been registered or used in bad faith:

1. The name "Suning" is a distinctive, coined term.

2. The Complainant has used the name "Suning" for many years before registration of the disputed domain name and has established a significant reputation including as one of the world's major e-commerce businesses.

3. The registrant name for the disputed domain name ("delemo Mobile Solutions"), as well as the July 2013 notice mentioned in section 4 above, indicate that the Respondent operates in the technology and Internet sector and there is therefore a reasonable likelihood that it was aware of the Complainant on the date of registration of the disputed domain name.

4. There is no evidence of genuine, legitimate use of the disputed domain name. The Wayback Machine indicates that, for much of the 10-year period since its registration, the disputed domain name has either not been used for a website at all or else simply resolved to an "under construction" page. The only remotely active use of the disputed domain name appears to have been the July 2013 notice and this raises more questions than it answers. In particular, this plain notice bears no branding, whether relating to the disputed domain name or otherwise, and indeed the contact e-mail address refers to a different domain name, i.e., <delemo.de>. No doubt, "Delemo" is an abbreviation of the name of the individual mentioned in the notice - "D.[…] L Montanaro" - and this also ties in with the registrant name "delemo Mobile Solutions". Why then use an entirely different domain name, i.e., the disputed domain name <suning.eu> in connection with this business?

5. The Respondent had not appeared in these proceedings to explain its purpose in registering the disputed domain name or to contest the Complainant's allegations. Nor has it replied to any of the Complainant's three cease and desist notices.

Accordingly, the Panel concludes that the Complainant has established the third element of Article 21(1) of the Regulation and Paragraph B(11)(d)(1)(iii) of the ADR Rules.

7. Decision

For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name, <suning.eu>, be transferred¹ to the Second Complainant².

Adam Taylor
Sole Panelist
Date: September 17, 2017

¹ Article 22(11) of the Regulation states that the Panel shall decide that a domain name shall be revoked if it finds that the domain name is speculative or abusive as defined in Article 21. Article 22(11) further provides that the domain name shall be transferred to a complainant if the complainant applies for the domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No. 733/2002.

Those general eligibility criteria are:

1. an undertaking having its registered office, central administration or principal place within the EU; or

2. organisations established within the EU without prejudice to the application of national law; or

3. natural persons resident within the EU.

The Second Complainant satisfies the eligibility criteria as it is an organisation established in France.

² This decision shall be implemented by the Registry within thirty (30) days after the notification of the decision to the Parties, unless the Respondent initiates court proceedings in a mutual jurisdiction.