WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nobis Inc. v. Organization
Case No. D2014-0068
1. The Parties
The Complainant is Nobis Inc. of Park Markham, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is Organization of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <cheapnobisjackets.com>, <nobis-buy.com>, <nobisbuy.com>, <nobis‑cheap.com>, <nobischeap.com>, <nobisclearance.com>, <nobis-discount.com>, <nobisdiscount.com>, <nobis-dk.com>, <nobisdk.com>, <nobisfactory.com>, <nobisjacketsoutlet.com>, <nobis-jakke.com>, <nobis-jakker.com>, <nobisjakkeroutlet.com>, <nobisjakkersalg.com>, <nobisnorge.com>, <nobis-online-shop.com>, <nobisonlineshop.com>, <nobisonsale.com>, <nobisoutletdk.com>, <nobisoutletonline.com>, <nobisoutletsalg.com>, <nobisoutlet2013.com>, <nobis‑sale.com>, <nobissale.com>, <nobis-salg.com>, <nobissalg.com>, <nobis-shop.com>, <nobisstar.com>, <nobisvip.com> and <nobiswholesale.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2014 and January 22, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On January 23, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2014.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 4, 2014. 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
A. Complainant
The Complainant is a company incorporated in Canada and the owner of registrations for the trade mark NOBIS in Canada (the “Trade Mark”), the earliest dating from 2008.
B. Respondent
The Respondent is an individual or an entity, apparently with an address in China.
C. The Disputed Domain Names
The disputed domain names were registered on the following dates:
<cheapnobisjackets.com> September 17, 2013
<nobis-buy.com> September 17, 2013
<nobis-cheap.com> September 13, 2013
<nobis-discount.com> September 13, 2013
<nobis-dk.com> September 28, 2013
<nobis-jakke.com> September 23, 2013
<nobis-jakker.com> September 24, 2013
<nobis-online-shop.com> September 25, 2013
<nobis-sale.com> September 13, 2013
<nobis-salg.com> September 25, 2013
<nobis-shop.com> September 11, 2013
<nobisbuy.com> September 17, 2013
<nobischeap.com> September 25, 2013
<nobisclearance.com> September 22, 2013
<nobisdiscount.com> July 7, 2013
<nobisdk.com> September 28, 2013
<nobisfactory.com> July 7, 2013
<nobisjacketsoutlet.com> September 17, 2013
<nobisjakkeroutlet.com> September 24, 2013
<nobisjakkersalg.com> September 24, 2013
<nobisnorge.com> September 23, 2013
<nobisonlineshop.com> September 17, 2013
<nobisonsale.com> September 25, 2013
<nobisoutlet2013.com> September 25, 2013
<nobisoutletdk.com> September 28, 2013
<nobisoutletonline.com> September 25, 2013
<nobisoutletsalg.com> September 25, 2013
<nobissale.com> July 7, 2013
<nobissalg.com> September 23, 2013
<nobisstar.com> September 22, 2013
<nobisvip.com> September 21, 2013
<nobiswholesale.com> September 22, 2013
D. The Websites at the Disputed Domain Names
The websites at 25 of the disputed domain names (the “Websites”) offer for sale Nobis branded products. Of these Websites, the majority is entirely English language websites, some are predominantly Norwegian language websites with some English language content, and others are Danish language websites with some English language content. The remaining seven disputed domain names are being passively held.
5. Parties’ Contentions
A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is a Canadian corporation selling high quality outerwear and accessories under the Trade Mark. The Complainant markets premium quality jackets, hats, scarves and accessories internationally through its licensed distributors and via its online store at its website “www.nobis.ca” (the “Complainant’s Website”).
The disputed domain names are confusingly similar to the Trade Mark. They contain the Trade Mark in its entirety, together with non-distinctive, generic words such as “cheap”, “jackets”, “outlet”, “online”, “shop” and “buy”, “norge”, “jakka”, “jakker” and “salg” (the Norwegian words for “Norway”, a country in which the Complainant’s products are commonly sold, and for “jacket”, “jackets” and “sale”); and “dk” (an abbreviation for Denmark, another country in which the Complainant’s products are commonly sold).
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain names. The Respondent is using 25 of the disputed domain names in respect of the Websites in order to intentionally attract Internet users, for commercial gain. The Websites feature the Trade Mark and the Complainant’s skull device mark. The content of the Websites has been scraped from the Complainant’s Website.
The remaining 7 disputed domain names are not resolved to active websites. Given the Respondent’s conduct in setting up the Websites, it is likely these disputed domain names may be resolved to similar websites in future.
The Respondent has registered and used the disputed domains names with the clear and obvious intention of attracting consumers to its Websites under the misimpression that they are official websites of the Complainant and to profit from this confusion.
The Complainant has received numerous complaints from customers and potential customers who have been deceived by the Websites and other websites. The Complainant has referred such customers to the Royal Canadian Mounted Police, whose counterfeiting division is currently investigating these Websites and others and making efforts to shut down merchant accounts associated with such websites.
For all of these reasons, the disputed domain names have been registered and used in bad faith.
B. Respondent
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, 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 other words, it is important 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 (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding, for the following reasons:
1. The content of the majority of the Websites is entirely in English, and there is also English language content on other Websites which are predominantly in Norwegian or Danish, which demonstrates that the Respondent is conversant in English;
2. Requiring the Complainant to translate the Complaint and annexures into Chinese would cause unnecessary delay and would be costly to the Complainant.
The Respondent did not file a Response and did not make any submissions regarding the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The content of majority of the Websites is solely in English. The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be unduly prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain names by over five years.
UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain names contain the Trade Mark in its entirety. The Panel concludes the use of generic words or abbreviations such as “cheap”, “jackets”, “outlet”, “online”, “shop”, “buy”, “norge”, “jakka”, “jakker”, “salg” and “dk” in the disputed domain names does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by over five years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services. To the contrary, 25 of the disputed domain names have been used in respect of the Websites, which have not been authorised by the Complainant. The Websites feature the Trade Mark and the skull device of the Complainant, and the content of the Websites has been copied from the Complainant’s Website. The Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
By using the 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 Respondent has registered and used 25 of the disputed domain names in respect of the Websites, which offer for sale cheap or discounted Nobis products, without the authorisation or approval of the Complainant. In addition to featuring the Trade Mark and the Complainant’s skull device, the content of the Websites has been copied from the Complainant’s Website. Such use clearly amounts to bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Panel makes no finding, however, with respect to the Complainant’s wholly unsubstantiated assertions in the Complaint that (1) it has received complaints from customers with respect to the products sold on the Websites; and (2) that the products sold on the Websites are counterfeits.
In all the circumstances of this proceeding, taking also into account the incomplete and misleading contact information provided by the Respondent in respect of each of the disputed domain name, the Respondent’s passive use of seven of the disputed domain names constitutes and provides further support for the Panel’s conclusion of bad faith.
For the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <cheapnobisjackets.com>, <nobis-buy.com>, <nobisbuy.com>, <nobis-cheap.com>, <nobischeap.com>, <nobisclearance.com>, <nobis-discount.com>, <nobisdiscount.com>, <nobis-dk.com>, <nobisdk.com>, <nobisfactory.com>, <nobisjacketsoutlet.com>, <nobis-jakke.com>, <nobis-jakker.com>, <nobisjakkeroutlet.com>, <nobisjakkersalg.com>, <nobisnorge.com>, <nobis-online-shop.com>, <nobisonlineshop.com>, <nobisonsale.com>, <nobisoutletdk.com>, <nobisoutletonline.com>, <nobisoutletsalg.com>, <nobisoutlet2013.com>, <nobis-sale.com>, <nobissale.com>, <nobis-salg.com>, <nobissalg.com>, <nobis-shop.com>, <nobisstar.com>, <nobisvip.com> and <nobiswholesale.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Date: March 18, 2014