WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sociedad Anonima Damm v. Qu Qin Zhu, Wen Zhou Lu Dao Shang Mao You Xian Gong Si / Nexperian Holding Limited

Case No. D2017-1013

1. The Parties

The Complainant is Sociedad Anonima Damm of Barcelona, Spain, represented by González-Bueno SLP, Spain.

The Respondent is Qu Qin Zhu, Wen Zhou Lu Dao Shang Mao You Xian Gong Si, Wenzhou, Zhejiang, China / Nexperian Holding Limited, Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <dammcn.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 23, 2017. On May 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2017, 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 6, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 8, 2017.

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 of the Complaint, and the proceedings commenced on June 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 4, 2017.

The Center appointed Jonathan Agmon as the sole panelist in this matter on July 10, 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 Rules, paragraph 7.

4. Factual Background

The Complainant, Sociedad Anónima Damm, is public limited Spanish company, founded on January 3, 1910.

The Complainant is the parent company of several subsidiaries engaged in different activities directly or indirectly related with the corporate objects of Damm, and which together with the Complainant form a consolidated group of companies operating principally in the beverages industry.

The Complainant is the owner of numerous trademark registrations for the mark DAMM around the world. For example: International trademark registration no. 289833, registered on October 16, 1964; European Union trademark registration no. 704007, registered on July 30, 1999; and more.

The Complainant is the owner of several domain names contacting its mark DAMM, both generic Top-Level Domains ("gTLDs") and country code Top-Level Domains ("ccTLDs"), among others <damm.com> and <damm.es>.

The disputed domain name <dammcn.com> was registered on August 30, 2016.

The Complainant submitted evidence showing the disputed domain name contained Chinese translated pages of the Complainant's website at <estrelladamm.com>.

Currently, the disputed domain name is inactive.

5. Parties' Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical or confusingly similar to the DAMM trademark in which the Complainant has rights.

The Complainant further argues that the letters "cn" in the disputed domain name <dammcn.com> are a mere geographical indication, which refers to China.

The Complainant further argues that the slight differences between its trademark DAMM and the disputed domain name are not sufficient to allow Internet users to distinguish the origin of the web pages.

The Complainant further argues that the Respondent lacks rights and legitimate interests in the disputed domain name.

The Complainant further argues that the disputed domain name displayed translated pages from its website at <estrelladamm.com>, and this shows clearly that the Respondent has knowledge of the Complainant's trademark.

The Complainant further argues that there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant also argues that the knowledge of the Respondent of the Complainant's DAMM trademarks cannot be denied.

The Complainant further argues that it was well established that registering a domain name identical or confusingly similar to a well-known trademark is proof of bad faith.

The Complainant further argues that the disputed domain name will confuse potential consumers into believing that the Respondent is affiliated with, or endorsed by the Complainant because the disputed domain name incorporates the Complainant's famous mark DAMM in its entirety and the website leaves no doubt about the fact that it refers to the Complainant's trademark.

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

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

"(a) 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."

The language of the Registration Agreement for the disputed domain name is Chinese, as confirmed by the Registrar in its verification email to the Center of May 24, 2017.

The Complainant requested that the language of the proceeding be English.

The Respondent did not respond to the Complainant's language request.

The Panel cites the following with approval:

"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) According to the evidence submitted in the Complaint, the website under the disputed domain name displays the DAMM mark and other words in English;

(ii) The Respondent translated parts of one of the Complainant's website in English into the Chinese language, thus showing that he has an understanding of the English language;

(iv) The Respondent having been notified of the proceeding in both Chinese and English failed to submit any comment on the language of the proceeding, or to provide any response to the Complaint;

(v) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.

Upon considering the above, the Panel determines that English shall be the language of the proceeding.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant owns numerous worldwide trademark registrations for the mark DAMM. For example: International trademark registration no. 289833, registered on October 16, 1964; European Union trademark registration no. 704007, registered on July 30, 1999; and more.

The Complainant also owns domain names with the trademark DAMM, i.e., <damm.com>, <damm.es> and others.

The disputed domain name <dammcn.com> is identical to the registered trademark DAMM apart from the addition of the letters "cn" and the gTLD suffix ".com". The disputed domain name integrates the Complainant's trademark DAMM in its entirety, as a dominant element.

The addition of the letters "cn" does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's DAMM trademark. It is clear that the most prominent element in the disputed domain name is the term "damm". Moreover, the "cn" is a clear indication to China where the Complainant also conducts business and the Respondent resides. Consequently, this Panel finds that the disputed domain name is confusingly similar to the Complainant's DAMM trademark.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the disputed domain name from the registered trademark: "[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, "the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark" (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, "[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark" (Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the Respondent.

Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.

In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the DAMM trademark, or a variation thereof.

The Respondent had not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may be evidence of bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark DAMM and long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the DAMM trademark at least since the year 1964. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The disputed domain name is confusingly similar to the Complainant's trademark. Previous UDRP panels have found that "[a] likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.

In light of the Complainant's distinctive registered trademark and the Respondent's use of a confusingly similar disputed domain name, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Also, based on the Complainant's evidence and considering the fact that the Respondent has operated a website under the disputed domain name pretending to be a Chinese version of the official site of the Complainant, offering for sale the Complainant's products, the Panel considers such acts to be clear indications of the Respondent's bad faith registration and use of the disputed domain name. Having regard to the evidence, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant and profit therefrom. The Respondent's actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that "the registration of a domain name with the knowledge of the complainant's trademark

registration amounts to bad faith".

Based on the evidence that was presented to the Panel, including the Complainant's registered trademark, the use of the Complainant's trademark in the disputed domain name, the use of the disputed domain name and the Respondent's failure to answer the Complaint, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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, <dammcn.com>, be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: July 19, 2017