WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Würth International AG v. shang hai peng sheng shi ye you xian gong si (上海鹏圣实业有限公司)
Case No. D2020-3114
1. The Parties
The Complainant is Würth International AG, Switzerland, represented by HK2 Rechtsanwälte, Germany.
The Respondent is shang hai peng sheng shi ye you xian gong si (上海鹏圣实业有限公司), China.
2. The Domain Name and Registrar
The disputed domain name <wuerthchina.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) in English on November 19, 2020. On November 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 2020, 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 November 23, 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 amendment to the Complaint on November 25, 2020.
On November 23, 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 November 25, 2020. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on December 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2021. On December 16, 2020, the Respondent sent a Chinese language email to the Center regarding potential settlement of the proceeding. On January 5, 2021, the Complainant replied to the Respondent’s email regarding possible settlement. On January 15, 2021, the Complainant sent an email to the Center confirming that it would like to continue with the proceeding.
The Respondent did not submit any formal response to the Complaint filed herein.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on February 5, 2021. 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
A. Complainant
The Complainant is a company incorporated in Switzerland and a leading global manufacturer and supplier of fasteners, chemicals, safety products, tools, and inventory management services under the word and device trade marks Würth and WUERTH (the “Trade Mark(s)”).
The Complainant is the owner of several registrations for the Trade Marks, including European Union registration No. 012774618 for the Trade Mark WUERTH, with a registration date of September 12, 2014.
The Complainant is also the owner of numerous domain names comprising the Trade Marks, including <wuerth.com> and <wuerth.cn> (the latter resolves to its Chinese and English language website promoting its goods, services and Trade Marks, and the business of its subsidiary company operating in China since 1994, Würth (China) Co., Ltd, to the Chinese market).
B. Respondent
The Respondent is apparently a company incorporated in Shanghai, China.
C. The Disputed Domain Name
The disputed domain name was registered on March 30, 2018.
D. Use of the Disputed Domain Name
The disputed domain name has been used in respect of a Chinese language website apparently offering for sale the Complainant’s products under the Trade Marks as well as third party competing products (the “Website”).
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the 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(a), 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 has requested that the language of the proceeding be English for several reasons, including the assertion that the Complainant and its representatives are not familiar with Chinese; the fact the disputed domain name contains Latin script; and the need for the Complainant to incur translation services at a disproportionately high cost if the language of the proceeding were to be Chinese.
The Panel would have accepted a response in Chinese, but the Respondent did not file a formal 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.
Although there is no evidence before the Panel to support a conclusion that the Respondent is conversant in English, the Panel notes equally that there is no evidence to support the conclusion that the Respondent is not conversant in English, that the Respondent has chosen not to contest this proceeding, and that all of the Center’s communications with the Parties have been sent in English and Chinese.
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.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name incorporates the entirety of the WUERTH Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “China”.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain name is confusingly similar to the WUERTH Trade Mark.
B. Rights or Legitimate Interests
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 name or to use the Trade Marks. 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 name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in connection with the Website, in order to offer for sale products in direct competition with those offered for sale and sold by the Complainant under the Trade Marks. The Website:
(i) Features prominently at the top of the landing page a logo that is strikingly similar to the Complainant’s device Trade Mark;
(ii) When a user clicks on the logo, redirects to a website falsely claiming to be operated by the Complainant’s authorised agent in Shanghai;
(iii) Otherwise claims to be an agent for branded industrial equipment; and
(iv) In fact does not offer for sale any of the Complainant’s goods, but instead apparently promotes competing branded products manufactured by the Complainant’s competitors.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied association (see WIPO Overview 3.0, section 2.5.1).
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In light of the manner of use of the disputed domain name highlighted in Section B. above, the Panel finds that the requisite element of bad faith has been made out, under paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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 <wuerthchina.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: February 23, 2021
