WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hutchinson S.A. v. liu jian fu (刘建福)

Case No. D2020-1331

1. The Parties

The Complainant is Hutchinson S.A., France, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is liu jian fu (刘建福), China.

2. The Domain Name and Registrar

The disputed domain name <hutchinson.group> is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2020. On May 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2020, 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.

On May 27, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on May 29, 2020. The Respondent requested that Chinese be the language of the proceeding on May 27 and 29, 2020.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. On June 18, 2020, the Respondent requested for an extension of the Response due date. On June 19, 2020, the Center granted the extension of the Response due date until July 4, 2020. The Respondent did not send any further communication. Accordingly, the Center informed the Parties that it would proceed with Panel Appointment on July 7, 2020.

The Center appointed Douglas Clark as the sole panelist in this matter on July 16, 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.

4. Factual Background

The Complainant, Hutchinson S.A., is a manufacturer founded in 1853 with its headquarters located in France. It manufactures industrial and automotive rubber products such as hoses, tubing, anti-vibration systems, belt drive, sealing systems and bike tires. It had generated revenue of EUR 4.314 billion in 2019 financial year, with approximately 44,000 employees working in 24 countries worldwide. The Fab House belongs to the Complainant which is a place for internal and external stakeholders to meet and exchange ideas. The 822 Fab House was opened in Suzhou, China in November 2019.

The Complainant has marketed and sold its goods and services using the HUTCHINSON trademark since 1853. The Complainant is the owner of various HUTCHINSON trademarks worldwide, including the Chinese trademark No. G634099 registered on October 21, 1994 in classes 7, 12 and 17 and French trademark No. 313680 registered on May 23, 1966 in classes 5, 7, 10, 12, 16, 17, 18, 20, 21, 24, 25, 26, 27 and 28.

The Complainant owns a range of domain names incorporating the HUTCHINSON trademark, including the primary domain name <hutchinson.com> registered on September 9, 1995. This primary domain name resolves to the Complainant’s website which enables access to information regarding the Complainant and its subsidiaries, products, and services.

The disputed domain name was registered on February 15, 2020, and resolves to an active webpage featuring multiple pay-per-click links including “Tires”, “Hutch”, “Tubeless Tires”, “Article”, Maxxis Tyres”. The disputed domain name is also being offered for sale for USD 3,800.

5. Parties’ Contentions

A. Complainant

Identical or confusingly similar

The Complainant contends that the disputed domain name <hutchinson.group> is identical to the HUTCHINSON trademark because the second level domain of the disputed domain name consists solely of the Complainant’s HUTCHINSON trademark and the generic Top-Level Domain (“gTLD”) “.group” is disregarded under the first element confusing similarity test.

No rights or legitimate interests

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

The Complainant claims that its registration of the HUTCHINSON trademark is prima facie evidence of its ownership and exclusive right to use the HUTCHINSON trademark.

The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way and it has not given the Respondent permission to use the Complainant’s trademarks in any manners. The Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

The Complainant asserts that the name of the Respondent, “liu jian fu”, does not resemble the disputed domain name in any manner. Thus, there is no evidence suggests that the Respondent is commonly known by the disputed domain name and that is evidence of a lack of rights or legitimate interests.

The Complainant contends that the Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete and reference with the Complainant and its business. For instance, the website resolved features multiple links such as “Maxxis Tires”, “Tubeless Tires”, “Tubeless Bike Tires” and “Maxxis Tyres”. The Complainant presumes the Respondent receives pay-per-click fees from the linked websites that are listed on the website at the disputed domain name. The Complainant contends that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use as allowed under paragraph 4(c)(iii) of the Policy.

Based on the fact that the disputed domain name is being offered for sale for USD 3,800, the Complainant claims that it served as further evidence of the Respondent’s lack of rights and legitimate interests.

The Complainant asserts that the Respondent registered the disputed domain name on February 15, 2020, which is significantly after the Complainant filed for registration of its HUTCHINSON trademark, the Complainant’s first use in commerce of its trademark in 1853 and the Complainant’s registration of its <hutchinson.com> domain name on September 9, 1995.

Registered and used in bad faith

The Complainant contends that the Respondent has registered the disputed domain name and is using it in bad faith.

The Complainant claims that it has marketed and sold its goods and services using the HUTCHINSON trademark since 1853, which is well before the Respondent’s registration of the disputed domain name. By registering a domain name that is identical to the Complainant’s HUTCHINSON trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark and the <hutchinson.com> domain name. The Complainant contends that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business.

The Complainant contends that it has started its business in 1853 and is well known for its Fab House. The Respondent’s registration of the disputed domain name was shortly after the Complainant’s announcement of its newly opened 822 Fab House in Suzhou, China which strongly suggests that the Respondent knew of the Complainant and only registered the disputed domain name in response to the publicity generated and received by the Complainant. The Complainant asserts that Internet search engines for “www.hutchinson.group” returns multiple links referencing Complainant and its business.

The Compliant claims that the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain name that consists solely of the Complainant’s HUTCHINSON trademark, which demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. By creating this likelihood of confusion between the Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the website at the disputed domain name for the Respondent’s own pecuniary gain.

Based on the fact that the Respondent is offering to sell the disputed domain name for USD 3,800, the Complainant contends that constitutes bad faith under paragraph 4(b)(i) of the Policy because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses.

The Complainant claims that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. The Complainant clams such failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.

B. Respondent

Except from requesting for an extension of the Response due date and requesting Chinese to be the language of the proceeding as described under the section 3 above, the Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the Registration Agreement is Chinese.

The Complainant requested the language of the proceeding be in English on the main grounds that (i) the Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter; (ii) The Respondent has registered a confusingly similar, if not, exact disputed domain name and is using the website at the disputed domain name for commercial gain by providing pay-per-click links to third party websites, which poses continuing risk to the Complainant and unsuspecting consumers seeking the Complainant or its products; (iii) the disputed domain name is comprised of Latin characters; (iv) the website at the disputed domain name features various third party links in English including “Hutch”, “Maxxis Tires” and “Tubeless Bike Tires”; and (v) the term “hutchinson”, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Chinese language.

The Respondent requested the language of the proceeding be in Chinese on the main grounds that (i) the disputed domain name was registered through a Chinese registration platform and the language of the Registration Agreement is Chinese; (ii) the mother tongue of the Respondent is Chinese and he is not able to understand the Complaint in English filed against the <hutchinson.group>.

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 Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Chinese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of the language of the proceeding by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.

The Panel observes that the Center, for its part, has communicated with the Parties in a bilingual manner in both English and Chinese concerning all of the various steps and requirements thus far in this administrative proceeding. As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed.

In consideration of the above circumstances and in the interest of fairness to both Parties, the Panel determines that the language of the proceeding should be in English, therefore the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Panel finds the disputed domain name <hutchinson.group> is identical or confusingly similar to the Complainant’s mark because the disputed domain name incorporates the Complainant’s HUTCHINSON trademark in full. The gTLD “.group” should be disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 1.11.1.

The first element 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.

Section 2.1 of the 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 made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name.

The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Further, the Respondent is not commonly known by the disputed domain name. Considering the absence of a formal response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.

The Panel finds that the Respondent could not have chosen and registered the disputed domain name in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide.

The Complainant’s HUTCHINSON trademarks have been used in commerce for many years. The disputed domain name was registered many years after the Complainant had started using the HUTCHINSON trademarks and registered the primary domain name <hutchinson.com>. Therefore, the Respondent should have knowledge of the Complainant’s trademarks and business. The website resolved from the disputed domain name features pay-per-click links which compete and reference with the Complainant and its business. It appears to the Panel that the Respondent has registered the disputed domain name, in order to create an association with the Complainant as a means of attracting Internet users to the resolved website for possible commercial gain. Further, the disputed domain name was offered for sale for USD 3,800 which is excess of the normal costs for registering and maintaining a domain name.

Under all the circumstances of this case as described above, the Panel is satisfied that the Respondent registered the disputed domain name with the Complainant’s mark in mind and has used the disputed domain name in bad faith. For the above reasons, the third part of the 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 <hutchinson.group> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: August 3, 2020