The Complainant is LPG SYSTEMS of Valence, France, represented by Cabinet Laurent & Charras, France.
The Respondents are Mr. Jeff Yan of Qingdao, Shandong, the People's Republic of China (“1st Respondent”), represented by himself and Jerry of Qingdao, Shangdong, the People's Republic of China (“2nd Respondent”) also self represented.
2. The Domain Name and Registrar
The disputed domain name <endermolift.com> is registered with Xiamen eName Network Technology Corporation Limited dba eName Corp (“eName Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2010. On March 15, 2010, the Center transmitted by email to GoDaddy.com, Inc. (“GoDaddy Registrar”) a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy Registrar transmitted by email to the Center indicating that it was no longer the registrar of the disputed domain name. The Registrar now is eName Registrar. On March 16, 2010, the Center transmitted by email to eName Registrar a request for registrar verification in connection with the disputed domain name. On the same day, eName Registrar transmitted by email to the Center its verification response confirming that the 2nd Respondent Jerry was then listed as registrant (which is different from the registrant stated in the original Complaint as filed by the Complainant on March 12, 2010 in which only the 1st Respondent Jeff Yan was named) and providing the contact details. On March 18, 2010, the Center transmitted by emails to the above-mentioned two registrars regarding the apparent transfer of the disputed domain name after the Complaint was filed. On March 24, 2010, eName Registrar confirmed by email that it would not be possible to restore the registrant information to the previous registrant Mr. Jeff Yan. On March 29, 2010, the Center transmitted by email to the Complainant regarding the change of the registrant information. On April 1, 2010, the Complainant filed an amendment to the Complaint naming the 2nd Respondent Jerry as a party to these proceedings.
On March 29, 2010, the Center also transmitted by email to the parties regarding the language of proceedings. On April 1, 2010, the Complainant submitted a request that English be the language of proceedings. On April 1, 2010 the 2nd Respondent requested that simplified Chinese be used for setting out the Complaint. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 26, 2010. The 2nd Respondent sent an email Response on April 25, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on May 14, 2010. 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.
On May 28, 2010, due to exceptional circumstances, the Panel extended the time for its decision.
4. Factual Background
The Complainant is the owner of the trade mark consisting of the word ENDERMOLIFT. Application for registration of this mark was filed in France under trade mark application no. 093650862 on May 15, 2009 which was published on June 19, 2009 and resulted in a registration on December 11, 2009 (Annex 5 to the Complaint).
The disputed domain name <endermolift.com> was registered on August 30, 2009 more than 3 months after the filing of the Complainant's trade mark ENDERMOLIFT in France but before the aforesaid publication and registration dates of the said trade mark.
The Complainant registered its domain name <endermolift.fr> on May 19, 2009 (Annex 6 to the Complaint) which was more than 3 months before the registration of the disputed domain name.
Other than the particulars shown on the print outs of the database searches conducted by the Complainant of the WhoIs database (Annexes 1 and 14 to the Complaint) in relation to the 1st Respondent and the WhoIs database search results provided by the Center, there is no evidence in the case file concerning the background of the Respondents and their businesses.
5. Parties' Contentions
A. Complainant
The Complainant has made the following contentions:
The Complainant has rights in the trade mark ENDERMOLIFT which it registered in France. The disputed domain name <endermolift.com> is identical to the trade mark ENDERMOLIFT. The Complainant also alleges that the disputed domain name <endermolift.com> is identical to that of the website it operates, namely <endermolift.fr>.
The trade mark ENDERMOLIFT is a word invented by the Complainant which no other traders will legitimately choose without an ulterior motive. The trade mark has not been used by others except the Complainant and it has not licensed or otherwise permitted others to use the mark. The disputed domain name has also not been used by its registrant.
The disputed domain name was registered on August 30, 2009 shortly after the publication of the Complainant's French trade mark on June 19, 2009 and only two days later it was offered to the Complainant by e-mail on September 2, 2009 apparently with the signatory describing himself as Jeff who claimed to have the disputed domain name <endermolift.com> (Annex 8 to the Complaint). There was a subsequent e-mail on September 24, 2009 (Annex 10 to the Complaint) from another person who described himself as Jack offering the disputed domain name to the Complainant at EUR 6500. Even by March 14, 2010, there was an e-mail by a person who called himself Lee/Lee Peng offering the disputed domain name to the Complainant at a reduced price of EUR 2200 (Annex 1C to the Amended Complaint).
The 1st Respondent owns about 241 other domain names and its e-mail address [[email protected]] is a contact on the WhoIs record of 341 domains (Annex 14).
The disputed domain name was registered for the purpose of attracting, for commercial gain, Internet users to a SEDO Parking website by creating a likelihood of confusion with the Complainant's trade mark ENDERMOLIFT and domain name <endermolift.fr>.
The disputed domain name was transferred from the 1st Respondent and GoDaddy Registrar to the 2nd Respondent and eName Registrar after the Complaint was filed with the Center and service of a copy of the Complaint on the 1st Respondent, all with a view to evading or disrupting these administrative proceedings which constitute cyber-flight.
B. Respondent
The 1st Respondent did not reply to the Complainant's contentions.
The 2nd Respondent first appeared in the correspondence in relation to these administrative proceedings by his aforesaid e-mail in Chinese on April 1, 2010 requesting the use of simplified Chinese characters for setting out the Complaint. He sent a further e-mail in Chinese to the Center on April 25, 2010 making the following contentions:
Registration of the disputed domain name on August 30, 2009 was more than 3 months earlier than the Complainant's registration for the mark ENDERMOLIFT in France on December 11, 2009.
Up to the date of his e-mail, the Complainant has not registered the trade mark in China.
The Claimant's website at “www.endermolift.fr” went online only in March 2010 but had always been in a dormant “under construction” state before that time.
The Respondents have not sold the disputed domain name. All the e-mails referred to in the Complaint were not sent from any of the e-mail addresses as shown in the WhoIs database relating to the disputed domain name.
The disputed domain name was purchased mainly for self use in selling products in China.
6. Discussion and Findings
Before embarking on an analysis of the three elements under paragraph 4(a) of the Policy, it is necessary to deal with various issues.
A. Identity of Respondent(s)
In this connection, it will be helpful to set out the exact time at which various events took place.
The Center has confirmed that the Complaint was filed by the Complainant on March 12, 2010 and received by the Center electronically at 15.52 hours Geneva time corresponding to (i) 6.52 hours in Scottsdale where Godaddy Registrar is situated (ii) 22.52 hours Beijing time which is the time zone where the Respondents and eName Registrar operate and (iii) 14.52 hours Greenwich Mean Time (“GMT”).
According to the e-mail from the 1st Respondent on March 16, 2010 to the Complainant (Annex 1D to the Amended Complaint), a copy of the Complaint was delivered to the e-mail address of the 1st Respondent as shown on the WhoIs database on March 12, 2010 at 22.54 hours Beijing time which was GMT 14.54 hours on the same day ie. 2 minutes after the Center received a copy of the Complaint electronically.
By its e-mail advice to the Center on March 18, 2010, GoDaddy Registrar advised that they did not receive notification of the Complaint until they received the Verification Notice and Complaint on Monday, March 15, 2010 which was already after the disputed domain name had been transferred to eName Registrar as further described below.
According to the advice from both GoDaddy Registrar and eName Registrar, transfer of the disputed domain name occurred at 14.33 hours Arizona time on March 12, 2010 which corresponds to (i) 22.33 hours Geneva time on the same day and (ii) 4.30 hours Beijing time the next day ie. March 13, 2010 and (iii) 21.33 hours GMT March 12, 2010.
The Center requested Registrar verification from eName Registrar on March 16, 2010 and following the events described in the procedural history under Section 3 above, the Center formally notified the Respondents that the proceedings commenced on April 6, 2010 and at the same time informed them of the Center's decision to, inter alia, accept the Complaint as filed in English despite the registration agreement being indicated as being in Chinese but with the proviso that the Panel has authority under paragraph 11 of the Rules to ultimately determine the language of proceedings and write a decision in either language, or request translation of either party's submissions.
In identifying the proper Respondent(s) in these administrative proceedings, the Panel has noted the following:
(a) A copy of the Complaint was served on the 1st Respondent at around 22.54 hours Beijing time on March 12, 2010
(b) In less than 7 hours, the transfer of the disputed domain name to the 2nd Respondent took place at the early hours of 4.33 hours Beijing time the next day.
(c) The 2nd Respondent apparently resides in the same province and city as the 1st Respondent.
(d) The name of the 2nd Respondent registrant Jerry apparently does not include a family or surname.
(e) There has been no explanation from any of the Respondents at all and this Panel finds it inconceivable that there can be any bona fide purchaser suddenly available to purchase the disputed domain name from the 1st Respondent under a normal arm's length transaction without notice of the Complaint in the odd midnight and early hours striding March 12 and 13, 2010 Beijing time.
(f) There are also other parties emerging in the aforesaid e-mails which contain offers of the disputed domain name to the Complainant at EUR 6500 and EUR 2200. While the 2nd Respondent suggested in its e-mail Response of April 25, 2010 to the Center that those e-mails were sent from e-mail addresses different from those as shown in the relevant WhoIs database relevant to the disputed domain name and presumably also that they had no connections with any of the Respondents, upon reading Annexes 8, 10 and 1C to the Complaint/Amended Complaint one cannot help but to find that they are all related.
(i) The e-mail from Jeff/ Jack Lee with a certain e-mail at […@yahoo.com] on September 2, 2009 to the Complainant [Annex 8 to the Complaint] said “we have www.endermolift.com” and “we can really consider selling it out if you are interested in it”.
(ii) The further e-mail from Jack Lee of the said e-mail at [email protected] on September 24 (Annex 10) referred to the disputed domain name and sent to the e-mail address of the Complainant's in-house legal counsel who issued the said cease and desist letter of September 17, 2009 to Mr. Jeff Yan (Annex 9 to the Complaint) in response to the invitation contained in Annex 8. It said “Please let us know if you can cover our costs of EUR 6500 for this domain”.
(iii) After the Complaint was served on the 1st Respondent on March 12, 2010, there was an e-mail offer from Lee or Leepeng from a certain […@gmail.com] email address on March 14, 2010 (Annex 1C) which said: ”We can drop the price to EUR 2200” and “if you want to go to WIPO, we will be there waiting for you”. It is also note worthy that in this e-mail, the 1st argument made by the 2nd Respondent in his said e-mail to the Center dated April 25, 2010 to the effect that the Complainant's trade mark was registered on December 11, 2009 while sender's domain name was registered on August 30, 2009 three months earlier than the Complainant's trade mark was rehearsed in English as it corresponds to the 1st argument made by the 2nd Respondent in his Chinese e-mail Response of April 25, 2010. As the Complaint was only served upon the 1st Respondent (and not yet on the 2nd Respondent at that time), it appears that Lee/Leepeng was connected with the senders of the previous e-mails (Annexes 8 and 10) and also was already aware of filing of the Complaint but which was only served on the 1st Respondent then.
In the Panel's assessment, the wordings of the e-mails shown in Annexes 8, 10 and 1C suggest that their senders have ownership or otherwise in control of the disputed domain name which enabled them to transfer it to the Complainant upon its acceptance of the offer. Such persons must either be the 1st Respondent or its nominee with full knowledge of the relevant facts. It also supports the conclusion that the 2nd Respondent must have knowledge of the Complainant.
The Panel finds that these unusual circumstances inevitably point to the irresistible conclusion that the 2nd Respondent is effectively a nominee of the 1st Respondent who must be aware of the filing of the Complaint with the Center and service of the Complaint on the 1st Respondent. Both Respondents give the impression of acting in concert within a short time to achieve a particular purpose, in this case to transfer the disputed domain name (a) out of the ownership of the 1st Respondent to the 2nd Respondent who was conveniently available and (b) and from Godaddy Registrar to eName Registrar, to facilitate the evasion and obstruction of these administrative proceedings.
The Panel further concludes that the 1st Respondent remains the true and beneficial owner of the disputed domain name and remains a proper party to these proceedings. The 2nd Respondent, being the nominee or perhaps even the 1st Respondent himself in a different name currently holding the disputed domain name is also properly included as a party to these proceedings. The Center has properly verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules.
B. Transfer of the Disputed Domain Name to a New Holder and Registrar
Paragraph 8 of the Policy prohibits, inter alia, under paragraph (a) transfer of the domain name registration to another holder and under paragraph (b) transfer of the disputed domain name registration to another registrar during a pending administrative proceeding.
There is no definition of what is meant by “pending” in the Policy and the Rules. Rule 3(a) of the Rules provides that “any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any provider….”. It seems tolerably clear from such wording that proceedings are initiated upon the submission of a complaint with the provider. Rule 4(c) of the Rules provides that the “date of commencement of the administrative proceeding shall be the date on which the provider completes its responsibilities under paragraph 2(a) in connection with forwarding the Complaint to the Respondents”. The date of commencement governs various time lines which is calculated from the date of commencement such as the time for filing a response under Rule 5(a) of the Rules.
This Panel is of the view that the Rules distinguish between the initiation of proceedings and the commencement of proceedings as described above for different purposes and under different contexts. However, it is also tolerably clear that the administrative proceedings begin to be “pending” from the point of initiation as described under Rule 3(a) and is certainly kept pending at the time of commencement of proceedings as described under Rule 4(c) and remain so until the conclusion of the proceedings. There are previous UDRP decisions in support of this interpretation. Patti Lupone v. XC2/Moniker Online Services LLC,
WIPO Case No. D2008-0450.
In the circumstances, the transfer of the disputed domain name after the submission of the Complaint by the Complainant to the Center on March 12, 2010 is found to be in violation of both paragraphs 8(a) and 8(b) of the Policy and to constitute cyberflight. Canwest Mediaworks Publications Inc. v. Laksh Internet Solutions Private Limited/SA c/o FP,
WIPO Case No. D2008-0687.
Under paragraph 8(a) of the Policy, the Registrar has the right to cancel any transfer of the domain name. In response to the Centre's invitation to have the registration particulars restored subject to the agreement of both Registrars, by their e-mail to the Centre on March 23, 2010, eName Registrar advised that they were not in a position to transfer the disputed domain name back to Godaddy Registrar.
The Panel has no power to order the Registrar to cancel the transfer of the disputed domain name despite breaches of paragraph 8 of the Policy. Humana Inc. v. CDN Properties Incorporated, WIPO Case No. D2008-1688; Kostritzer Schwartzbierbrauerei v. Macros Telekom Corp.WIPO Case No. D2001-0936.
Rule 10 of the Rules provides that “The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules”. The Panel has wide powers and discretion to do so in so far as it is not done in a way which is contrary to the Policy and the Rules. Mrs. Eva Padberg v. Eurobox Ltd. WIPO Case. No.D2007-1886. Following its finding of cyber-flight under above, the Panel further finds that the registrar from which the disputed domain name registration was transferred remains to be the registrar for the purposes of Rule 3(b)(xiii) referred to under the next Section and to the extent necessary, the transfer of the disputed main name was invalid for this purpose. Given the panel's findings under Section 6A to the effect that the 1st Respondent remains the true and beneficial owner of the disputed domain name, there is no prejudice to the 1st Respondent.
C. Election of Mutual Jurisdiction
Rule 1 of the Rules defines “mutual jurisdiction” to mean a court jurisdiction at the location of either (a) the principle office of the Registrar or (b) domain-name holder's address as shown for the registration of the domain name in Registrar's WhoIs database at the time the Complaint is submitted to the provider.
In its Amended Complaint filed on April 1, 2010, the Complainant has not changed its election of the jurisdiction of the Court of Arizona, USA under Rule 3(b)(xiii) as the mutual jurisdiction to which the Complainant will submit, with respect to any challenges that may be made by the Respondents to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint.
Following the Panel's finding under Section 6 B above to the effect that the GoDaddy Registrar remains the registrar, the election of mutual jurisdiction by the Complainant remains valid. In a cyber-flight situation, the spirit of the Policy and the Rules supports the interpretation that the registrar should be the registrar “at the time the Complaint is submitted to the provider” even though those words are not expressly repeated to qualify the first limb of that definition or a comma may be missing after the word “database” in that definition. Mrs. Eva Padberg v. Eurobox Ltd. supra.
D. Language of Proceeding
Paragraph 11(a) 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”.
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that these proceedings be conducted in English while the 2 nd Respondent repeatedly maintained by its e-mails on April 1 & 25, 2010 that the Chinese language should be used on the grounds that both the 2nd Respondent and eName Registrar are in China, he does not read English and a lot of efforts have to be made to translate the Complaint to understand it briefly.
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' abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,
WIPO Case No. DCC2006-0004 also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account including (a) the Panel's finding to the effect that 2nd Respondent is a nominee of the 1st Respondent which has entered into a registration agreement with GoDaddy Registrar in English (Annex 3) (b) the e-mail correspondence with the Complainant on behalf of either the 1st Respondent and/or the 2nd Respondent as shown in Annexes 8, 10 and 1C were all conducted in English (c) all the relevant parties have English names and (d) the disputed domain name is in English, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.
E. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The 1st Respondent has not replied to the Complaint. The 2nd Respondent has filed an e-mail Response on April 25, 2010. In any case, the failure of a respondent to respond does not automatically result in a favourable decision to the complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna King,
WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,
WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade mark ENDERMOLIFT by reason of its French trade mark registration as recited in Section 4 above. The fact that it was registered after the registration of the disputed domain name or that the trade mark has no corresponding trade mark registration in China does not prevent the Complainant from successfully establishing this component of the first element.
Furthermore, the Panel finds that the disputed domain name is substantially identical or confusingly similar to the Complainant's trade mark ENDERMOLIFT despite the addition of the generic top-level domain “.com”. After removing the generic top-level domain, only the word “endermolift” is left in its entirety. It is well-established practice to disregard the top-level part of a domain name, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,
WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is satisfied.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted filing for registration and use of the registered trade mark ENDERMOLIFT more than 3 months prior to the Respondent's registration of the disputed domain name <endermolift.com> on August 30, 2009. Further, the Panel notes that the names of the Respondents being registrants do not correspond in any way with the disputed domain name. There is no evidence put before the Panel to show any of the Respondents are commonly known as <endermolift.com>. There is no evidence available to demonstrate any use at all of the disputed domain name by the Respondents.
There is no possible explanation as to why it was necessary for the Respondent to adopt the word “endermolift” in its domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
There is no evidence that the disputed domain name has been actively used by the Respondents as a website for either a legitimate noncommercial or fair use purpose, or in connection with a bona fide offering of goods or services. On the other hand, there is ample evidence detailed under Sections 5A and 6A above that the Respondents whether by themselves or their nominees have repeatedly offered to sell the disputed domain name to the Complainant for valuable consideration in excess of their out of pocket costs directly related to the registration of the disputed domain name. The Panel accordingly finds that, inter alia, the circumstances of paragraph 4(b)(i) of the Policy are present. It is also not possible to think of any plausible, genuine use of the disputed domain name by the Respondents.
Other than the above, the conduct of the Respondents as described under Sections 6A and 6B above constitutes cyber-flight in serious breaches of paragraph 8 of the Policy on the basis of which the element of bad faith can also be established. PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),
WIPO Case No. D2006-0917.
The Panel accordingly finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <endermolift.com> be transferred to the Complainant.
C. K. Kwong Sole Panelist
Dated: June 4, 2010
Stay updated! Get new cases and decisions by daily email.
