The Complainant is Singer Sourcing Limited LLC, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is chen jia jin, China.
The disputed domain names <singosu.com> and <sinshosk.com> are registered with 35 Technology Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 18, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on January 10, 2020.
On January 9, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on January 10, 2020. 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 English and Chinese of the Complaint, and the proceeding commenced on January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 21, 2020. 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.
The Complainant is a company incorporated in the United States and is one of the world’s largest consumer sewing machine companies. The Complainant has been manufacturing, marketing and selling sewing machines under the trade mark SINGER (the “Trade Mark”) since 1850.
The Complainant has rights in the Trade Mark in jurisdictions worldwide, the earliest of which (United States) registration No. 49,600, has a registration date of February 13, 1906.
The Complainant also owns numerous domain names comprising the Trade Mark, including <singer.com>, registered on June 8, 1995.
The Respondent is apparently an individual located in China.
The disputed domain names <singosu.com> and <sinshosk.com> were registered on September 26, 2019 and December 1, 2019, respectively.
The disputed domain names resolve to the same English language website which impersonates the Complainant’s legitimate “www.singer.com” website and appears to offer for sale the Complainant’s sewing machine products under the Trade Mark at discounted prices (the “Website”).
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules 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 order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant contends that the Respondent is able to communicate in English as the Website is an English language website.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
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’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides as follows:
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. On the other hand, if such website content does not obviously trade off the complainant’s reputation, panels may find this relevant to an overall assessment of the case merits, especially under the second and third elements (with such panels sometimes finding it unnecessary to make a finding under the first element). […]
In this context, panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.”
“The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.
In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name[…]”
In the present proceeding, the disputed domain names do not incorporate the entirety of the Trade Mark.
The Complainant asserts that the disputed domain names are both confusingly similar to the Trade Mark, essentially as the first four letters of the disputed domain name <singosu.com> are the same as the first four letters of the Trade Mark; and the first three letters of the disputed domain name <sinshosk.com> are the same as the first three letters of the Trade Mark.
The Complainant also contends that the disputed domain names reproduce the majority of the Trade Mark at the second-level, and both would trigger an “autocomplete” in an Internet web browser for a user starting to type the term “Singer”.
The Panel considers that, aurally and conceptually, the disputed domain names are not confusingly similar to the Trade Mark.
The Complainant has adduced no evidence in support of its contention that both of the disputed domain names would trigger an “autocomplete” in an Internet web browser for a user starting to type the term “Singer”. The Complainant is unable to make a finding of confusing similarity on this ground.
The Respondent has nonetheless clearly sought to target the Trade Mark through registering the disputed domain names and resolving them to the same Website which impersonates the Complainant’s genuine website reproducing the Trade Mark on the Website. In all the circumstances the Panel is prepared to find that the disputed domain names are visually (if not aurally and conceptually) similar to the Trade Mark, which is affirmed by the Respondent’s use of the Website to clearly target the Complainant’s Trade Mark (which tips the balance in favour of the Complainant in this proceeding).
The Panel finds that all the circumstances of the present proceeding support the conclusion that the Respondent registered the disputed domain names precisely because he believed that the disputed domain names were confusingly similar to the Complainant’s Trade Mark.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names both resolve to the same Website, which has been set up to impersonate the Complainant’s genuine website.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
In light of the manner of the use of the disputed domain names highlighted in Section 6.2.B. above, the Panel finds that the requisite element of bad faith has been made out.
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.
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 names <singosu.com> and <sinshosk.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 6, 2020
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