Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd.
Case No. D2008-0293
1. The Parties
The Complainants are Whirlpool Corporation, Michigan, United States of America; and Whirlpool Properties, Inc., Michigan, United States of America, represented by Baker & McKenzie, Hong Kong, SAR of China.
The Respondent is Hui’erpu (HK) electrical appliance co. ltd., Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <whirlpool-hk.com> is registered with Xin Net Technology Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2008. On February 29, 2008, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain name at issue.On March 3, 2008, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. An amended Complaint was filed on March 5, 2008 to correct an error in the address of the Complainant Whirlpool Properties, Inc on the original Complaint.
In response to the Center’s communication that the language of the proceedings should be the language of the registration agreement which is Chinese, the Complainants filed a request on March 5, 2008, for the language of the proceedings to be English instead.
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”), 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 March 11, 2008. The Center also notified the Respondent on March 11, 2008 of the Complainants’ request for the language of the proceedings to be English and invited the Respondent to communicate any difficulties the Respondent may have in this regard by March 18, 2008 failing which it would be taken that the Respondent did not object to English being the language of the Proceedings. The Respondent did not respond on the Complainants’ request for the language of the proceedings to be English.
As the disputed domain name was set to expire on March 28, 2008, the Center notified the Registrar of paragraph 3.7.5.7 of the ICANN Expired Domain Deletion Policy. The Registrar advised the Center on March 25, 2008 that the disputed domain name will remain in lock status until the conclusion of the proceedings.
In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2008.
The Center appointed Soh Kar Liang as the sole panelist in this matter on April 24, 2008. 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 first Complainant is a leading manufacturer and marketer of a large variety of home appliances including air-conditioners, washers, dryers, water purifiers, water dispensers, refrigerators, cookerhoods, microwave ovens in Hong Kong, SAR of China and around the world. The first Complainant has over 50 manufacturing and technology research centers worldwide and has an employee population of about 80,000.
Since 1957, the first Complainant has been using the trade mark WHIRLPOOL on its products. Since 1991, it started using the Chinese trade mark, 惠而浦 (pronounced “hui er pu” in Mandarin and “wai yi po” in Cantonese), in countries with a Chinese-speaking population, presumably as a Chinese transliteration of WHIRPOOL.
The second Complainant is a wholly-owned subsidiary of the first Complainant. It holds the rights in the trade marks WHIRPOOL and 惠而浦 comprising a portfolio of 750 trade marks in 130 countries, including several trade mark registrations in Hong Kong, SAR of China and China. The first Complainant is licensed by the second Complainant to use its registered trade marks.
The Complainants established its first branch office in Hong Kong, SAR of China in 1989. To-date, the Complainants have incorporated four companies in Hong Kong, SAR of China, all of which include the word WHIRLPOOL or 惠而浦 in the respective English and Chinese versions of their names. Currently, the Complainants have two show rooms, a service center and a sales office in Hong Kong, SAR of China. A market survey by AC Neilson identified WHIRPOOL as the top selling brand in Hong Kong, SAR of China for 12 years.
The Complainants and its group of companies have registered a large number of domain names at various top level and country code domains including <whirlpool.com>, <whilepool.com.sg>, <whirlpool.com.tw>, <whirlpool.com.au>, <whirlpool.co.nz>, <whirlpool.us>, <whirlpool.net>, <whirlpool.org>, <whirlpool.cc>, <whirlpool.info>, <whirlpool.com.hk> and <whirlpool.hk>. A substantial number of hits on the first few pages of an Internet Google search conducted on January 21, 2008 against the word “whirlpool” were associated with the Complainants.
The Complainants became aware of the disputed domain name in July 2007. The WhoIs record of the disputed domain name indicates that it was registered on March 28, 2005. The Complainants’ search at the Hong Kong Companies Registry did not reveal any record of any company bearing the name of the Respondent. Neither does an Internet Google search against the Respondent’s name as at October 4, 2007 produce any hits.
The website at “www.whirlpool-hk.com” as at July 17, 2007 showed a company name in English (“Whirlpool (Hong Kong) Electric Appliance Limited”) and Chinese (“惠而浦 (香港) 电器有限公司”). Records at the Hong Kong Companies Registry indicated that it was incorporated on December 15, 2004 as “Worpurl (Hong Kong) Electric Appliance Limited 惠而浦 (香港) 电器有限公司” but changed its English name to “Whirlpool (Hong Kong) Electric Appliance Limited” on June 2, 2005. The sole shareholder and director of the company was recorded as “Meiping Hua”, the named administrative contact of the disputed domain name.
The website provided information on products which included water dispensers and water purifiers but not washing machines. The signs Worpurl and 优浦 (pronounced “you pu” in Mandarin) appear prominently on the website. The message board at the website as at August 27, 2008 also contained feedback presumably entered by purchasers of Whirlpool washing machines. There was no apparent response from the Respondent on the message board to clarify that the Respondent did not deal in Whirlpool washing machines.
On August 27, 2007, the Complainants through their authorized representatives issued cease and desist letters to Whirlpool (Hong Kong) Electric Appliance Limited and Meiping Hua demanding among other things that they stop using
(a) the disputed domain name;
(b) the company name “Whirlpool (Hong Kong) Electric Appliance Limited 惠而浦 (香港) 电器有限公司”; and
(c) the signs Whirlpool, Worpurl, 惠而浦 and 优浦.
On September 1, 2007, Meiping Hua replied promising to change the company name. On October 25, 2007, the Complainants, through their authorized representatives, further wrote to Meiping Hua to insist on the outstanding items under their cease and desist letters. Meiping Hua responded on October 31, 2007 as follows (translated into English):
“A. The document for change of the company name had already been submitted to the Government of the Hong Kong SAR and the process will be completed in a very short time.
B. If your firm’s client is interested in my trade mark ‘WORLPURL’ (sic) and ‘优浦’ and the domain name (‘www.whirlpool-hk.com’), your client can contact me direct, and if the price is reasonable, I can consider an assignment.
C. We shall not further reply to your firm’s letter unless your firm can produce the original letter of authorization issued by your client, the trade mark owner of ‘WHIRLPOOL’ and ‘惠而浦’.”
A subsequent search with the Hong Kong Companies Registry revealed that the company name was changed to “Smartem (Hong Kong) Electric Appliance Limited 香港司迈特电器有限公司” on November 2, 2007. Nevertheless, as at January 16, 2008, the “Contact Us” section of the website at “www.whirlpool-hk.com” continued to maintain an email contact of “[…]@whirlpool-hk.com”.
5. Parties’ Contentions
A. Complainant
The Complainants contend that:
(1) The disputed domain name is identical or confusingly similar to the Complainants’ trade marks and the mere addition of the letters “hk” to the word “whirlpool” is insufficient to avoid confusion with the Complainants’ trade marks;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent was never known by the disputed domain name. The Respondent had not made any trade mark application for the disputed domain name in Hong Kong, SAR of China. Use of the various marks WHIRLPOOL, WORPURL, 惠而浦 and 优浦 on the website at “www.whirlpool-hk.com” was calculated to deceive the public; and
(3) The disputed domain name was registered and is being used in bad faith. The Respondent should have known of the Complainants’ trade marks and is riding on the Complainants’ reputation and goodwill. Use of the disputed domain name would inevitably lead to confusion of some sort. The disputed domain name was also used to divert users from the Complainants’ websites for its own commercial gain.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1 Language of the Proceedings
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.”
As the Registration Agreement in the present case is in Chinese, the default language of the proceedings would have been Chinese. Paragraph 11(a) reserves to the Panel the authority to determine the language otherwise. In view of the Complainants’ request, the Panel is now called upon to exercise its authority under paragraph 11(a). In support of their request, the Complainants relied on the following arguments:
(1) The Complainants are US entities, and English is the main language of communication for the Complainants;
(2) The domain name registration agreement as provided by the WhoIs server provider for the disputed domain name is written in English;
(3) There will be no prejudice caused to the Respondent if the proceedings are conducted in English as the Respondent is competent in English:
(a) According to the WhoIs search on the disputed domain name, the Respondent is based in Hong Kong, SAR of China where English is one of the official languages that is commonly used in Hong Kong, SAR of China;
(b) The website of the disputed domain name has an English version found at the link “http://www.whirlpool-hk.com/english/introduce.php”.
There have been many previous UDRP decisions which acknowledged that due regard must be had to the risk of:
(1) Undue burden on a complainant in terms of translation expenses; and
(2) Undue delay resulting from the imposition of strict adherence to the language of the Registration Agreement.
These principles were founded on fairness to the parties and on the recognition that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. In addition to the arguments canvassed by the Complainants, the Panel also noted that
(1) the Respondent was able to respond to the Complainants’ cease and desist letters and subsequent correspondence which were all in English;
(2) the Respondent was given ample opportunity by the Center to obstruct the Complainants’ request for English to be the language of the proceedings;
(3) the Respondent was clearly aware of the situation it faced in terms of the disputed domain name and the procedural issue of the language of the proceedings in view of the fact that all communications from the Center to the Respondent were sent both in English and Chinese, the latter being the language of the Registration Agreement; and
(4) despite the foregoing, the Respondent chose not to contest both the Complaint and the Complainants’ request for English to be the language of the proceedings.
Having considered all circumstances above, the Panel determines under paragraph 11(a) that English shall be the language of the proceedings. It should be highlighted that in coming to this determination, the Panel gave little weight to the Complainants’ argument that the domain name registration agreement provided by the WhoIs server provider is written in English. There was insufficient information to determine whether the English version of the registration agreement was made available by the Registrar to the Respondent or even known to the Respondent.
6.2 The Panel’s decision in relation to the disputed domain name
In accordance with paragraph 4(a) of the Policy, the Complainants must satisfy the Panel that:
(1) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
WHIRLPOOL has been registered as a trade mark by the Complainants in Hong Kong, SAR of China and many other countries and is clearly a trade mark in which the Complainants has rights.
The disputed domain name incorporates substantially the word “whirlpool”. Granted, the addition of the suffix “-hk” prevents the disputed domain name from being literally identical to the Complainants’ trade mark. There are numerous UDRP decisions that discount the top level domain portion of a domain name when comparing whether such domain name would be regarded as identical to a trade mark. For example, the domain name <whirlpool.com> would be treated as identical to the trade mark WHIRLPOOL because the “.com” portion would be disregarded. Similarly, the “.com.hk” portion of <whirlpool.com.hk> would also be disregarded.
In the absence of other indications, it does not require any imagination to conclude that the suffix “-hk” was adopted in the disputed domain name as a geographical reference to Hong Kong, SAR of China, whether by reason of the Respondent and/or its administrative contact being cited in Hong Kong, SAR of China, or by reason of the lineage of company names adopted by the Respondent and/or its administrative contact incorporating the words “Hong Kong”.
In the present case, the Panel is inclined to treat the suffix “-hk” as analogous to the country code top level domain “.hk” and to disregard it when comparing the disputed domain name to the Complainants trade mark registrations for WHIRLPOOL. Nevertheless, it is unnecessary to do so as the Panel is satisfied that the addition of “-hk” as a suffix to “whirlpool” is insignificant and insufficient to avoid confusion with the Complainants’ mark WHIRPOOL. Accordingly, the first limb of paragraph 4(a) of the Policy has been met.
B. Rights or Legitimate Interests
Based on the submissions of the Complainants, the Panel accepts that:
(1) The Respondent in the sense of the name “Hui’erpu (HK) electrical appliance co., ltd.” does not exist and appears to be a fictitious name of the administrative contact, Meiping Hua;
(2) The disputed domain name bears no relation to the name of the Respondent (however fictitious that may be) and/or the administrative contact Meiping Hua.
(3) At the time the disputed domain name was registered, it was not based on any company name associated with the Respondent and/or Meiping Hua since “Worpurl (Hong Kong) Electric Appliance Limited” changed its name to “Whirlpool (Hong Kong) Electric Appliance Limited” some months later;
(4) The use of the Complainants’ trade marks WHIRLPOOL and 惠而浦 by the Respondent and/or Meiping Hua whether as part of a company name or a domain name is not authorized by the Complainants;
(5) Not only does the Complainants’ trade mark WHIRLPOOL have significant goodwill and reputation in Hong Kong, SAR of China protected under the doctrine of passing off, it is also the subject of exclusive trade mark rights granted to the Complainants in Hong Kong, SAR of China by virtue of trade mark registration. Hence, the Respondent faces an uphill task of showing that in spite of these trade mark rights, it still has a right or legitimate interest in respect of the disputed domain name;
(6) The Respondent and/or Meiping Hua do not have any trade mark registration rights in relation to the signs WHIRLPOOL and 惠而浦 in Hong Kong, SAR of China; and
(7) When notified by the Complainants via their cease and desist letters, the Respondent and/or Meiping Hua was quick to acknowledge that it would stop using Whirlpool and 惠而浦 in the company name “Whirlpool (Hong Kong) Electric Appliance Limited 惠而浦 (香港) 电器有限公司”.
In the face of these cogent factors, the Respondent has failed to provide any justification of a right or legitimate interest in respect of the disputed domain name. As such, the Panel concludes that the Respondent does not have any rights or legitimate interest in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 2 of the Policy states:
“By applying to register a domain name, … , [the Respondent] hereby represent and warrant to [the Registrar] that … (b) to [the Respondent’s] knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) [the Respondent is] not registering the domain name for an unlawful purpose; and (d) [the Respondent] will not knowingly use the domain name in violation of any applicable laws or regulations. It is [the Respondent’s] responsibility to determine whether [the Respondent’s] domain name registration infringes or violates someone else's rights.”
Given the significant goodwill and reputation in Hong Kong, SAR of China of the Complainants’ mark WHIRLPOOL and the trade mark registrations thereof in Hong Kong, SAR of China, it is inconceivable without the benefit of additional information that the Respondent and/or Meiping Hua were not aware of the Complainants’ mark WHIRLPOOL. The quick response by Meiping Hua to the Complainants’ cease and desist letters and the subsequent change of name of Meiping Hua’s company further confirms the Respondents’ knowledge and respect of the Complainants’ trade mark rights.
Paragraph 4(b) of the Policy provides that the following is evidence of bad faith registration and use:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
[…]
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The deliberate choice of signs used on the Respondent’s website (including the name of the company “Whirlpool (Hong Kong) Electric Appliance Limited”) and which bear significant resemblance to the Complainants’ trade marks WHIRLPOOL and 惠而浦 raises strong inferences of bad faith on the part of the Respondent and/or Meiping Hua.
The products offered on the website at “www.whirlpool-hk.com” are within the range of the Complainants’ own products. Coupled with the unjustified use of signs which are confusingly similar to the Complainants’ trade marks on the website and the uncontroverted evidence of apparent confusion in posts on the website’s message board regarding Whirlpool products not carried by the Respondent, the Panel considers that paragraph 4(b)(iv) has been made out.
Additionally, the reply of Meiping Hua on October 31, 2007 additionally raises strong suspicions as to whether the disputed domain name was registered with the primary purpose of transferring it to the Complainants. Although no amount was proposed, a monetary compensation was clearly envisaged by Meiping Hua. Faced with this, the fictitious nature of the Respondent’s name, the lack of legitimate right or interest in the disputed domain name by the Respondent, the unauthorized adoption of confusingly similar signs on the website at “www.whirlpool-hk.com”, the overall conduct of the Respondent and Meiping Hua, and the factual circumstances outlined above, the Panel cannot avoid the conclusion that the disputed domain name was registered and used in bad faith by the Respondent.
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 disputed domain name, <whirlpool-hk.com> be transferred to the second Complainant, Whirlpool Properties, Inc.
Soh Kar Liang Sole Panelist
Dated: May 8, 2008
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