WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carnegie Fabrics, LLC (卡内基织物有限责任公司) v. wang Ariel, Ariel
Case No. D2017-0560
1. The Parties
The Complainant is Carnegie Fabrics, LLC (卡内基织物有限责任公司) of New York, United States of America ("United States"), represented by Stroock & Stroock & Lavan LLP, United States.
The Respondent is wang Ariel, Ariel of Nanjing, Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <xorel.net> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 17, 2017. On March 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 22, 2017, the Registrar 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 regarding the registrant information and candidates for panelists, the Complainant filed an amended Complaint on March 24, 2017. The Complainant confirmed further the registrant information on March 29, 2017.
On March 22, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On March 24, 2017, the Complainant submitted the amended Complaint translated into Chinese, however, the Complainant appeared to request English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on March 30, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 20, 2017.
The Center appointed Douglas Clark, David Stone and Jacob (Changjie) Chen as panelists in this matter on May 3, 2017. The Panel finds that it was properly constituted. Each member of 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.
After considering the submissions of the Complainant and the evidence filed, on May 17 2017, the Panel issued an Administrative Panel Procedural Order (the "Procedural Order"). The Panel ordered the Complainant within seven days to provide:
(1) Evidence the Respondent corresponded with the Complainant's distributor in Singapore, Shreeji Innova Wallcoverings, in English as mentioned in paragraph 10 of the Complaint.
(2) A copy of the Complaint filed by the Complainant with Nanjing Intermediate Court against Nanjing Ariel Decoration Material Co. Ltd, together with details of the current status of the case pending in the Nanjing Intermediate Court.
(3) An explanation of the source of the photo at Annex 8 of the Complaint setting out how it relates to the Respondent.
(4) Evidence that watermarked images were taken from the Complainant's website "www.carnegiefabrics.com" and used on the website under the disputed domain name as alleged on page 8 of the Complaint.
Further, for any documents in Chinese, the Complaint was ordered to provide a translation into English. The Respondent was also given an opportunity to file a response within 14 days after the Complainant complied with the Procedural Order.
On May 23, 2017, the Complainant by email responded to the Procedural Order together with supporting documents.
The Respondent did not respond by the due date June 6, 2017.
4. Factual Background
The Complainant is a textile business incorporated in the State of New York, the United States. It is the registered proprietor of a large number of trademark registrations comprising the word "XOREL" including Chinese Registration No. 7398772 dated October 28, 2010 XOREL (word mark) in Class 24 for woven fabrics for use as wall covering and for furniture. Xorel is the Complainant's high performance and sustainable interior textile product.
The disputed domain name <xorel.net> was registered on August 15, 2013.
The Respondent was the single shareholder and legal representative of Nanjing Ariel Decoration Co. Ltd. ("Nanjing Ariel"). The legal representative of Ariel was changed on February 20, 2017 to Chen Meifong.
Nanjing Haomiao Decorating Material Co. Ltd ("Haomiao"), which appears to be a related company to Nanjing Ariel, applied to register the trademark XOREL in class 27 in China. Haomiao and Nanjing Ariel now share the same legal representative and have the same contact information. The Complainant has opposed Haomiao's application and the opposition is currently pending before the Chinese Trademark Office.
The Complainant has also filed a lawsuit against Nanjing Ariel before Nanjing Intermediate Court for trademark infringement, copyright infringement, and unfair competition. It has made a claim for recovery of the disputed domain name in the lawsuit but it is not clear on what basis, as the Respondent is not a Defendant to the action.
5. Parties' Contentions
A. Complainant
Identical or confusingly similar
The Complainant submits that the disputed domain name <xorel.net> is made entirely up of the registered trademark XOREL and the generic Top-Level Domain ("gTLD") ".net". It is therefore identical or confusingly similar to the Complainant's registered trademark XOREL.
No rights or legitimate interests
The Complainant submits that the Respondent has no connection with the Complainant or any of its affiliates. The XOREL mark is owned by the Complainant and the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant further submits that the Respondent's attempt (through Haomiao) to circumvent the Complainant's existing registration of the XOREL mark by filing in another class is an effort to steal customers and therefore cannot be considered to create rights or legitimate interests. The Complainant has opposed the trademark application filed by Haomiao and the opposition is currently pending.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant's rights in the XOREL trademark and registered the disputed domain name to attract business to its website as the Complainant and the Respondent are competitors. As such, the Respondent is deliberately using the disputed domain name to profit from the Complainant's legally protected trademark and copyrighted designs, and the disputed domain name was created with the primary purpose of disrupting the Complainant's business.
Therefore, the Complainant submits the Respondent's registration and use of the disputed domain name is in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Litigation in Chinese Court/Trademark Opposition Proceedings
Although the Respondent has not responded, the Panel has considered if the litigation pending in the Nanjing Intermediate People's Court and the pending trademark opposition proceedings before the Chinese Trademark Office give any cause to suspend or terminate these proceedings.
Paragraph 18(a) of the UDRP Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding where the disputed domain name is also the subject of other pending legal proceedings.
Paragraph 4.14.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides that "appointed panels are reluctant to suspend a UDRP case due to concurrent court proceedings, most notably because of the potential for indeterminate delay; the WIPO Center would similarly be reluctant to facilitate such suspension".
Paragraph 4.14.2 of WIPO Overview 3.0 further provides that, where there are pending court proceedings, it is within the panel's discretion to determine the relevance to ascribe to such proceeding in the UDRP context, in light of the case circumstances.
The pending litigation in the Nanjing Intermediate People's Court concerns trademark infringement, copyright infringement, and unfair competition. The Respondent is not a party to the litigation. There is a claim for transfer of the disputed domain name in the proceedings, however, it is not clear how this is to be achieved as the Respondent is not a party to the litigation.
The trademark opposition proceedings involve a third party that appears to be related to the Respondent. However, the Respondent has not responded to assert any right to make use of the trademark applied for.
The Panel does not therefore consider there are any grounds to suspend or terminate the proceedings.
6.2. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The general principle adopted by the UDRP panels has been set out in Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,
WIPO Case No. D2003-0989, where the panel said:
"The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors."
The Complainant requested the language of the proceeding to be English in the Complaint on grounds that included that the Complainant is an American company that conducts all its business in English and has no familiarity with Chinese nor Chinese-speaking employees. Further, the Complainant's website "www.carnegiefabrics.com", from which the Respondent has taken copyrighted patterns, the trademark XOREL and photographs of the Complainant's products, is in English. The Complainant submits that there is no doubt that the Respondent can communicate in English. Hence, the obligation to translate all case relevant documents would be an unfair disadvantage to the Complainant.
The Complainant also asserted that the Respondent had communicated in English with a Singaporean company. However, no evidence was produced to support this. In response to the Procedural Order, the Complainant stated the communication had been in Chinese and that it had mistakenly relied on a Google translation as being the communication from the Respondent.
On March 22, 2017, the Center invited the Parties to comment on the language of the proceeding. In response to this, the Complainant filed a Chinese translation of the amended Complaint. The Respondent did not respond to the language request.
The Center made a preliminary determination to:
1) accept the Complaint as filed English and the amended Complaint as filed in Chinese;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The Respondent did not respond to the Center's preliminary determination.
The issue for the Panel to determine is whether to issue its decision in English or Chinese.
The Respondent has had an opportunity to review a translation of the amended Complaint. It has not chosen to respond. Given the circumstances of the case, where the Complainant has requested the language of the proceeding be English and the Respondent has not responded at all after a translation into Chinese was filed, the Panel considers it fair to both parties to render its decision in English.
6.3. Decision
A. Identical or Confusingly Similar
The disputed domain name <xorel.net> is entirely made up of the registered trademark XOREL and the gTLD ".net". The gTLD is generally not taken into account when considering identity or similarity. The disputed domain name is identical to the registered trademark XOREL.
The first part of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of WIPO Overview 3.0 provides:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Complainant has brought to the attention of the Panel the trademark application in Class 27 by Haomiao. However, the Respondent has not responded to assert any right to take the benefit of this application, nor to assert any other rights or interests. The trademark application in itself does not create any legitimate rights and interests that the Respondent can rely upon.
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted.
The second part of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name <xorel.net> was registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"(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 website under the disputed domain name makes it clear that the Respondent knew of the Complainant. It makes mention of "Xorel" (i.e., the Complainant's product) and contains watermarked images taken from the Complainant's website "www.carnegiefabrics.com". There is no doubt the disputed domain name is being used to attract Internet users for commercial gain by creating a likelihood of confusion as to source or affiliation.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <xorel.net> be transferred to the Complainant.
Douglas Clark
Presiding Panelist
David Stone
Panelist
Jacob (Changjie) Chen
Panelist
Date: June 21, 2017
