WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

M.F. H. Fejlesztõ Korlátolt Felelõsségû Társaság v. zhangwei

Case No. D2016-0573

1. The Parties

Complainant is M.F. H. Fejlesztõ Korlátolt Felelõsségû Társaság of Budapest, Hungary, represented by Novagraaf Nederland B.V., Netherlands.

Respondent is zhangwei of Yangzhou, Jiangsu, China.

2. The Domain Name and Registrar

The disputed domain name <wwwtezenis.com> is registered with 22net, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2016. On March 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 24, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

On March 29, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On March 30, 2016, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent in both Chinese and English of the Complaint, and the proceedings commenced on April 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 29, 2016.

The Center appointed Yijun Tian as the sole panelist in this matter on May 10, 2016. 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

Complainant, M.F. H. Fejlesztõ Korlátolt Felelõsségû Társaság, is a company incorporated in Budapest, Hungary.

Complainant has exclusive rights in the TEZENIS Marks, mainly used for clothing, underwear, etc. for related franchise and retail services. Complainant is the exclusive owner of these registered trademarks globally (see Annexes 4-6 to the Complaint), including registration in European Community (since June 6, 2003) and international registration covering China (since September 19, 2003). Complainant also owns the domain name <tezenis.com>.

Respondent is zhangwei of Yangzhou, Jiangsu Province, China.

The disputed domain name <wwwtezenis.com> was registered on October 20, 2015.

5. Parties’ Contentions

A. Complainant

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

The disputed domain name is identical or confusingly similar to the TEZENIS Marks because the disputed domain name incorporates the TEZENIS Mark in its entirety in association with Latin characters “www”.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

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

Complainant requests that the disputed domain name <wwwtezenis.com> be transferred to it.

B. Respondent

Respondent did not reply to 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 specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant does not have any knowledge of the Chinese language.

(b) Based on the website accessed through the disputed domain name, Respondent has chosen the English language to address any trademark issues that may arise from the content of the website. Also the linked Privacy Policy is in English. There is not a single Chinese word to be found on the website (Annexes 2 and 3 to Complaint).

(c) In conformity with the request on the website at “www.wwwtezenis.com” Complainant has tried to address the trademark issue at hand (by the e-mail that can be found in the attachments), but no response was received.

(d) Complainant has no knowledge of Chinese, and is therefore not able to understand and use the proposed language and translation of all documents to Chinese and from Chinese back to English would be a very costly and time consuming matter.

(e) Respondent has chosen the English language on their website to address trademark issues and the proceedings at hand are in fact trademark related issues. Based on the website of Respondent, Respondent has no trouble with English being the language of any proceedings and would therefore not be unfairly or unjustly troubled by changing the language to English.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from Hungary, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “www” and “tezenis” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <wwwtezenis.com> is registered in Latin characters, rather than Chinese script; (b) The website at the disputed domain name is an English website. The content of the website is available in English rather than in Chinese; (c) the website appears to have been directed to users worldwide, particularly English speakers; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds 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. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by 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 Panel finds that Complainant has rights in the TEZENIS Marks acquired through registration. The TEZENIS Mark has been registered worldwide (since 2003).

The disputed domain name <wwwtezenis.com> comprises the TEZENIS Mark in its entirety. The disputed domain name only differs from Complainant’s trademark by the addition of the Latin characters “www” (World Wide Web) and the generic Top-Level Domain (“gTLD”) “.com”. This does not seem to eliminate the identity or at least the confusing similarity between Complainant’s registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it” (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The addition of the descriptive term “www” as a prefix to Complainant’s mark fails to distinguish to this Panel the disputed domain name from Complainant’s trademark. By contrast, it may increase the likelihood of confusion as “www” is the abbreviation of “World Wide Web”. Internet users who visit Respondent’s website are likely to be confused and may falsely believe that the disputed domain name <wwwtezenis.com> is operated by Complainant.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the TEZENIS Marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with 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 in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the TEZENIS Mark, including registration in European Community (since June 2003) and international registration covering China (since September 2003).

Moreover, Respondent is not an authorized dealer of TEZENIS branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

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

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “tezenis” in its business operation or the use of the TEZENIS Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the TEZENIS Mark or to apply for or use any domain name incorporating the TEZENIS Mark;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <wwwtezenis.com> was registered on October 20, 2015, which is long after the TEZENIS Marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s TEZENIS Mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality providing links to websites of third parties, including third parties’ websites advertising, offering and selling purported TEZENIS products.

The Panel finds that Respondent has failed to produce any compelling evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second condition of paragraph 4(a) of the Policy.

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 disputed domain name in bad faith, namely:

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

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

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 Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the TEZENIS Marks with regard to its products. Complainant has registered its TEZENIS Marks internationally, including China. Moreover, the website at the disputed domain name contains TEZENIS marks and provides the links of third parties which advertises for sale various purported TEZENIS products. Respondent would likely not have advertised products purporting to be TEZENIS products on the website if it was unaware of TEZENIS’s reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the TEZENIS Mark is not a mark that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant.

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using the disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites” and third parties’ websites purportedly offering Complainant’s TEZENIS-branded products and services without authorization. Complainant claimed that “Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website initially and/or further on-line locations via linked advertisements”.

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the TEZENIS Marks (as well as the content on Respondent’s website mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved.

In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the TEZENIS Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at <wwwtezenis.com> is either Complainant’s site or the site of official authorized agent of Complainant, which is not the case. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) 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 <wwwtezenis.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 27, 2016