WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compagnie de Saint-Gobain v. Wengang Zhao, Suzhou Osealing Industrial Technology Co., Ltd.
Case No. D2017-1089
1. The Parties
The Complainant is Compagnie de Saint-Gobain of Courbevoie, France, represented by Nameshield, France.
The Respondent is Wengang Zhao, Suzhou Osealing Industrial Technology Co., Ltd. of Suzhou, Jiangsu, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <saint-gobain.group> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 6, 2017, the Respondent submitted two emails inquiring how to proceed with this case.
On June 8, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on June 8, 2017. The Complainant requested that English be the language of the proceeding on the same day.
On June 9, 2017, the Respondent submitted an email inquiring how to settle with the Complainant. Accordingly, the Center informed the Parties on the same day that if the Parties wished to explore settlement options, the Complainant should submit a request for suspension by June 14, 2017. The Complainant submitted a request for suspension on June 9, 2017. The Center notified the Parties on the same day that the proceeding was suspended until July 9, 2017. There were email exchanges between the Parties during the suspension period.
On June 20, 2017, the Complainant submitted a request to reinstitute this proceeding. On the same day, the Center informed the Parties the proceeding was reinstituted, including the new deadline for the Parties to comment on the language of the proceeding. On June 22, 2017, the Complainant confirmed its request that English be the language of the proceeding. On the same day, the Respondent confirmed its request that Chinese be the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceeding commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Center also provided the Respondent with a Model Response in Chinese on June 26, 2017.
On June 26, 2017, July 11, 2017 and July 13, 2017, the Respondent submitted four emails indicating that it could not understand the Complaint in English and was unable to respond, and requesting the Complainant to provide a translated Complaint in Chinese. The Respondent indicated further that it would file a Response upon receipt of the Complaint in Chinese after panel appointment. The Respondent did not submit any substantive Response. Accordingly, the Center notified the Parties in both Chinese and English of the commencement of the panel appointment process on July 17, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on July 25, 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 is a company incorporated in France and is one of the top 100 global producers of industrial products for the construction and building industries.
The Complainant is the owner of registrations in numerous jurisdictions worldwide for the trade mark SAINT-GOBAIN (the “Trade Mark”), including four international registrations designating China, the earliest, No. 551682, registered since July 21, 1989.
The Complainant has been operating under the Trade Mark in China since 1985.
The Trade Mark has also been registered with the Trademark Clearinghouse (“TMCH”) since July 15, 2013.
The Respondent is a company incorporated in China.
C. The Disputed Domain Name
The disputed domain name was registered on April 28, 2017.
D. The Website at the Disputed Domain Name
Prior to the filing of the Complaint, the disputed domain name was resolved to a dual Chinese and English language website promoting the Respondent’s manufacturing business located in Suzhou, China and its range of industrial products including gaskets, O-rings, and oil seals (the “Website”).
As at the date of this decision, the disputed domain name is no longer resolved to any website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar or identical to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
The Respondent did not formally reply 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 name 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. However, paragraph 11(a) of the Rules 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 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 Complainant has requested that the language of the proceeding be English, for several reasons, including the following:
(1) The disputed domain name is formed by words in Roman characters (ASCII) and not in Chinese script;
(2) The Respondent can write and understand the English language, as the Website has an English version; and
(3) In order to proceed in Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of this proceeding.
The Respondent stated repeatedly, in its email correspondence with the Center and with the Complainant, that it is unable to understand English. The Respondent also indicated that it has engaged specialist legal representation, but that its legal representatives are unable to read English. The Respondent also requested that it be provided with a Chinese language translation of the Complaint as a prerequisite for the filing of a Response.
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.
The Panel notes that the Website is a dual Chinese and English language website; and the English language version of the Website is written in flawless English. The Panel considers that this fact, irrespective of the Respondent’s protestations, provides sufficient evidence to suggest the likely possibility that the Respondent is conversant in English.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this regard, in all the circumstances, including in particular the English language content of the Website, the Panel considers the Respondent’s language requests amount to no more than a delaying tactic.
The Panel also notes that, in the course of the Respondent’s extensive email correspondence with the Center, the Center provided the Respondent with a Model Response in Chinese language. Had the Respondent elected to file a Chinese language Response, the Panel would have had no hesitation in accepting the Complaint in English and the Response in Chinese, and rendering this decision in English or Chinese.
In all the circumstances, including the fact the Respondent chose not to file a Response, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
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.
The disputed domain name comprises the Trade Mark in its entirety and is therefore, excluding the generic Top-Level Domain (“gTLD”) “.group” (in accordance with previous UDRP decisions), identical to the Trade Mark.
Accordingly, the first element under paragraph 4(a) of the Policy has been made out.
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 disputed domain name:
(i) before any notice to the respondent 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 (as an individual, business, or other organization) has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. 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 name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has previously been used in respect of the Website which, without the Complainant’s authorisation, promoted and offered for sale a wide range of industrial products in direct competition with those produced by the Complainant’s group of companies.
The fact the Website has been taken down at some stage following the filing of the Complaint further demonstrates a lack of rights or legitimate interests on the part of the Respondent in the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the evidence of the Respondent’s clearly commercial and unauthorised prior use of the Website in the manner described above, and also in light of the fact the Website has subsequently been taken down following filing of the Complaint, the Panel finds the requisite element of bad faith has been satisfied, both under paragraph 4(b)(iv) of the Policy and under the Panel’s general discretion.
The Panel concludes bad faith is further made out by virtue of the fact the disputed domain name is identical to the Trade Mark. In light of this, and also the Complainant’s longstanding use of the Trade Mark in China since 1985, there can be no question the Respondent was aware of the Complainant’s rights in its Trade Mark prior to registration of the disputed domain name.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith.
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 <saint-gobain.group> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: August 8, 2017