WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Firetrap Limited v. Fu Hai Qiang

Case No. D2017-1111

1. The Parties

The Complainant is Firetrap Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Reynolds Porter Chamberlain LLP, United Kingdom.

The Respondent is Fu Hai Qiang of Weifang, Shandong, China.

2. The Domain Names and Registrars

The disputed domain name <firetrap.info> is registered with West263 International Limited. The disputed domain name <firetrap.top> is registered with Chengdu West Dimension Digital Technology Co., Ltd. West263 International Limited and Chengdu West Dimension Digital Technology Co., Ltd. are referred to below individually and collectively as the “Registrar”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On the same day, the Center transmitted by email to each Registrar a request for registrar verification in connection with the disputed domain names. On June 11, 2017, each Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the disputed domain names and providing the contact details.

On June 19, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On June 22, 2017, 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 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 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2017.

The Center appointed Matthew Kennedy as the sole panelist in this matter on July 20, 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 part of the “Sports Direct” group of companies. The “Firetrap” clothing brand was founded in 1993 and is sold at retail outlets and online at “www.firetrap.com”, which offers international delivery, including to China. The Complainant owns Chinese trademark registration number 1174791 for FIRETRAP, registered from May 14, 2008, specifying clothing and other goods in class 25. That registration remains current.

The Respondent is an individual located in China and the registrant of both disputed domain names. A reverse WhoIs database search provided by the Complainant shows that the Respondent’s email address is associated with over 50 domain names created during the months of February 2017 and March 2017. Many of those domain names are composed of a brand name with or without a dictionary word, plus a generic Top-Level Domain (“gTLD”) suffix.

The disputed domain names were both created on February 21, 2017. Neither disputed domain name resolves to any active website; both are passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s FIRETRAP trademark. Each one combines that trademark with a gTLD suffix, either “.info” or “.top”.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has found no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, nor evidence that the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain names. The intention of the Respondent must be to take advantage of the association of the disputed domain names with the business of the Complainant.

The disputed domain names have been registered and are being used in bad faith. The Complainant’s registered rights pre-date the disputed domain name registrations. The Respondent has engaged in a pattern of conduct of registering domain names that incorporate well-known third party brands in which the Respondent has no rights. The Respondent only passively holds the disputed domain names. The disputed domain names are so similar to the Complainant’s trademark that it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use them.

B. Respondent

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

6. Discussion and Findings

6.1. Consolidation of Multiple Disputes

The Complaint, as filed in this proceeding, initiated disputes regarding two different domain name registrations. The Panel observes that the Respondent is the registrant of both disputed domain names, and that both disputed domain names incorporate the Complainant’s FIRETRAP trademark. Therefore, in accordance with paragraph 10(e) of the Rules, the Panel decides that it is appropriate to consolidate these two domain name disputes in a single proceeding.

6.2. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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 Registrar confirmed that the Registration Agreement for each disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that it has no working knowledge of Chinese and that it would be prejudiced if it were to incur translation costs in circumstances where the Respondent has refused to engage in correspondence and pursued a course of conduct demonstrative of bad faith. The Respondent did not comment on the language of the proceeding.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding takes place with due expedition. Prior UDRP panels have noted that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint in this proceeding was filed in English. Having been notified of this administrative proceeding in Chinese and English, the Respondent has not expressed any interest in responding to the Complaint or participating in this proceeding in any other way. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.3. Analysis and Findings

The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the FIRETRAP trademark.

Each disputed domain name incorporates the Complainant’s FIRETRAP mark in its entirety as its dominant and only distinctive element.

The only additional element in each disputed domain name is a gTLD suffix, either “.info” or “.top”. However, a gTLD suffix generally has no capacity to distinguish a domain name from a trademark for the purposes of comparison under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(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 trademark 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 trademark or service mark at issue.

The Panel has already found that the disputed domain names are confusingly similar to the Complainant’s FIRETRAP trademark. There is no evidence that the Complainant has granted the Respondent a licence or other authorization to use its trademark or to register its trademark in a domain name.

The disputed domain names do not resolve to any active website. That is not a use of the disputed domain names in connection with a bona fide offering of goods or services, nor evidence of some legitimate noncommercial or fair use, as envisaged by the first and third circumstances of paragraph 4(c) of the Policy.

According to the Registrar’s confirmation emails, the Respondent’s name is “Fu Hai Qiang”. There is no evidence indicating that the Respondent has been commonly known by either of the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.

Based on the above, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because he did not file a Response.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive.

With respect to registration, the Panel observes that the disputed domain names, apart from the gTLD suffixes, are identical to the Complainant’s FIRETRAP trademark. The Respondent registered the disputed domain names years after the Complainant registered its trademark in China, where the Respondent is located. Although the word “firetrap” has a dictionary meaning, the Panel notes that the Respondent’s email address is associated with many domain names that are composed of a brand name plus a gTLD suffix, like the disputed domain names, and created around the same time. This gives the Panel reason to find that the Respondent deliberately chose to register the Complainant’s trademark in the disputed domain names in bad faith.

With respect to use, the Respondent makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Ltd v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a certain reputation in its trademark through use in connection with clothing, including through the official website “www.firetrap.com” that offers delivery to China. The disputed domain names incorporate the FIRETRAP trademark in its entirety with only a gTLD suffix. The disputed domain names have not been used in a way related to the dictionary meaning of the word “firetrap”. The Respondent’s email address is associated with many domain names that are composed of a brand name plus a gTLD suffix, like the disputed domain names, which is a further indication of bad faith. Given these circumstances, the Panel finds that the Complainant has discharged its burden of demonstrating that the disputed domain names are being used in bad faith. The Respondent has failed to rebut that case because he did not file a Response.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 names <firetrap.info> and <firetrap.top> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: July 24, 2017