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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

WIKA Alexander Wiegand GmbH & Co. KG v. HiChina DomainAdmi, Yuyao Hengtal Appearance Co. Ltd

Case No. D2007-0794

 

1. The Parties

The Complainant is WIKA Alexander Wiegand GmbH & Co. KG, Klingenberg, Germany, represented by Tiedtke-Bьhling-Kinne & Partner (GbR), Germany.

The Respondent is HiChina DomainAdmi, Yuyao Hengtal Appearance Co. Ltd, Yuyao, China.

2. The Domain Name and Registrar

The disputed domain name <chinawika.com> is registered with HiChina Web Solutions Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2007. On June 1, 2007, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On June 4, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a Language Request Submission on June 14, 2007 requesting English to 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”), 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, and the proceedings commenced on June 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 25, 2007. 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 WIKA Alexander Wiegan GmbH & CO. KG of Germany and is in the business of measuring apparatus. The Complainant is the owner of a multiplicity of trade marks, both in terms of word marks and word image marks, with the denomination WIKA registered amongst other things measuring apparatus in many countries through out the world including the Province of China. The German trade mark registration of WIKA dates back to January 14, 1953. In the Province of China, the mark WIKA was first registered on April 30, 1990 and has been subsequently renewed on April 30, 2000 to April 29, 2010.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

The Complainant asserts that it has registered trade mark rights in the mark WIKA in many countries throughout the world including the Province of China in relation to measuring apparatus. The Complainant asserts that it has been producing and selling measuring instruments for more than 60 years and that the Complainant uses the mark WIKA worldwide among others for their measuring instruments. The Complainant has branches worldwide including the Province of China.

The Complainant contends that the disputed domain name is highly similar to its WIKA mark and the only difference is the addition of the descriptive element “China”. However, the Complainant contends that the addition of “China” to “wika” in the composition of the disputed domain name will only be considered by the public as an indication that this is a Chinese branch of WIKA Corporation and is accessible under the disputed domain name. Therefore, in this way, the Complainant contends that the addition of “China” does not avoid a similarity between the disputed domain name and the Complainant WIKA mark. Furthermore, the goods in relation to which the WIKA mark is registered and those offered for sale under the disputed domain name are identical, both being measuring instruments.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant contends that there is no evidence that the use of the disputed domain name by the Respondent is in connection with a bona fide offering of goods or services. The Respondent has not been and is not commonly known by the disputed domain name and is making commercial use of the disputed domain name by allowing the webpage of a Chinese company named Ningbo Weike Instrument Co., Ltd. accessible via the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant contends that the disputed domain name was registered in order to prevent the owner of the trade mark from reflecting the mark in the corresponding domain name. The disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, intentionally attempted to attract for financial gain, Internet users to the registrant’s web site or other online locations, by creating a likelihood of confusion with the Complainant’s mark. This is supported by the fact that the Chinese trade mark of the Complainant was registered 10 years before the Respondent has registered the disputed domain name. Furthermore, the Complainant contends that the name of the company whose webpage is accessible under the disputed domain name is Ningbo Weike Instrument Co., Ltd. but the domain name registered by the Respondent on behalf of this company is not “www.chinaweike.com” but “www.chinawika.com”. This in the view of the Complainant shows that it was and still is the intention of the Respondent when registering the disputed domain name to gain customers which expect the renowned company of the Complainant or the Chinese branch thereof by accessing a webpage with 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

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant confirms that there is no agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. However, the Complainant contends that the administrative proceedings should continue to be conducted in English for the following reasons:

a) that the disputed domain name is in English; and

b) that the contents of the Respondent’s website are offered in English; and

c) that the Complainant has made all the possible efforts in contacting the Respondent in its attempt to seek an agreement on the issue of language of the proceeding but had not been successful.

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; and (b) the contents of the Respondent’s website are offered in English. The Panel also notes that the Complainant has made all the possible efforts in contacting the Respondent in its attempt to seek an agreement on the issue of language of the proceeding but had not been successful. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel was determined that the proceeding should be English and accordingly the decision of the Panel will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the WIKA mark in many countries throughout the world since it first obtained registered trade mark rights in 1953 in Germany.

The disputed domain name consists of the Complainant’s mark WIKA in its entirety and the English word “China” attached to it in front. In assessing the degree of similarity between the Complainant’s trade marks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s WIKA mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.

The Panel finds that the Complainant’s WIKA mark is a coined word with no descriptive significance to the goods or services offered under it. It is highly distinctive and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “wika” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the English word “China” is a mere geographic description and it does not provide additional specification or sufficient distinction from the Complainant or its trade mark WIKA. The Panel finds that the addition of the word “China” to the word “wika” does not serve to distinguish it from the Complainant’s WIKA mark. In fact, the Panel finds that the addition of the word “China” serves to suggest a geographical location of the Complainant’s business, which increases the level of confusion of Internet users as Internet users may confuse the Respondent’s website for the Complainant’s official website devoted to its customers in the Province of China.

Bearing in mind in particular the reputation of the Complainant’s trade mark and the distinctive character of the word “wika” in the Complainant’s mark; the dominant component of the disputed domain name; the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <chinawika.com> is confusingly similar to a trade mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “chinawika” in its business operations. In fact, the name of the company whose webpage is accessible under the disputed domain name is Ningbo Weike Instrument Co., Ltd. and rightfully, one would expect the Respondent’s choice in a domain name to reflect this. However, the domain name registered by the Respondent on behalf of this company is not <chinaweike.com> but <chinawika.com>;

2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. The Complainant and its trade mark WIKA enjoy a reputation with regard to its measuring apparatus sold and manufactured since as early as 1953. Consequently, in the absence of contrary evidence from the Respondent, the WIKA trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Complainant enjoys a long and widespread reputation in its WIKA trade mark with regard to its measuring apparatus business. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from the Respondent, the Panel finds that the WIKA trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefrom.

The Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites offering products which are similar to the Complainant, i.e. measuring apparatus. Given the long and widespread reputation of the Complainant’s WIKA mark, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Potential partners and end users are led to believe that the website “www.chinawika.com” is either the Complainant’s Chinese site or the site of official authorized partners of the Complainant, while in fact it is neither of these. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s WIKA trade mark and this constitutes a misrepresentation to the public that the Respondent’s website is in one way or the other associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <chinawika.com> be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: August 8, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0794.html

 

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