WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NODALETO v. 孟祥东

Case No. DCN2020-0049

1. The Parties

The Complainant is NODALETO, France, represented by Cabinet Bouchara, France.

The Respondent is 孟祥东, China.

2. The Domain Name and Registrar

The disputed domain name <nodaleto.cn> is registered with 杭州电商互联科技有限公司（原杭州创业互联科技有限公司）(the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2020. On January 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, 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 for the disputed domain name. The Center sent an email communication to the Complainant on January 11, 2021 providing the registrant and additional contact information disclosed by the Registrar. The Complainant filed an amended Complaint in English on January 12, 2021.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on January 14, 2021. In accordance with the Rules, Article 17 and 49, the due date for Response was February 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2021.

The Center appointed C. K. Kwong as the sole panelist in this matter on March 4, 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, Article 29.

4. Factual Background

The Complainant designs, manufactures and distributes shoes for women. The Complainant is the owner of trademarks consisting of or comprising the word “Nodaleto”, including International Trademark Registration No. 1486516 for the mark NODALETO and device registered on July 11, 2019 (designating in China) in International Classes 14 and 25 (Annex 18 of the Complaint).

The Complainant is also the holder of the domain name <nodaleto.com>, registered on January 16, 2016 and <nodaleto.shop>, registered on June 29, 2020 with which it operates as its main websites (Annexes 19 and 20 of the Complaint).

The disputed domain name <nodaleto.cn> was registered on April 15, 2020 after the registration of the Complainant’s said International Trademark Registration No. 1486516 and four years after the registration of the Complainant’s domain name <nodaleto.com>. The disputed domain name is offered for sale by the Respondent on the website to which the disputed domain name resolves (Annex 22 of the Complaint).

5. Parties’ Contentions

A. Complainant

The disputed domain name fully incorporates the Complainant’s trademark NODALETO and the principal main part of the Complainant’s domain names <nodaleto.com> and <nodaleto.shop>.

Apart from the country-code Top-Level Domain (“ccTLD”) suffix “.cn”, the disputed domain name is identical to the Complainant’s trademark.

“Nodaleto” is an anagram of the surname of Mrs. Julia Toledano, CEO of the Complainant and creator of all the models of shoes sold under the Complainant’s trademark. There is no connection between the Respondent and the Complainant or its business.

The Respondent is not commonly known by the disputed domain name and has no trademark or service mark rights with respect to the disputed domain name.

The website “www.nodaleto.cn” to which the disputed domain name resolves, is currently operated to indicate that the disputed domain name is for sale and redirect to a third party domain name <huatian.net> operating as a transaction website.

A cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant owned the trademark NODALETO and used it extensively. The Respondent had the duty to verify that the registration of the disputed domain name would not infringe the rights of any third party before registration.

The word “Nodaleto” is a contrived word which is an anagram of surname of Mrs. Julia Toledano, CEO of the Complainant, it could not have been chosen at random by the Respondent.

The term “Nodaleto” is not a usual Chinese term and only refers to the Complainant. It is impossible for the Respondent to use the term “Nodaleto” to register the disputed domain name based on coincidence without knowing the Complainant.

The Respondent holds a large number of domain names, over 19,000, mostly for sale (Annexes 24 and 25 of the Complaint). The Respondent has engaged in a pattern of trademark abusive domain name registrations.

The disputed domain name is offered for sale by the Respondent on the website to which the disputed domain name resolves as well on other online platform such as 22.cn (Annex 23 of the Complaint) with the obvious purpose of obtaining improper benefits. The Respondent has no reasonable explanation for using the Complainant’s trademark as part of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Notice of the Proceeding

Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under Article 5 of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.

6.2. Language of the Proceeding

Article 8 of the Rules provides that the language of the proceedings shall be Chinese unless otherwise agreed by the Parties or decided by the Panel in exceptional cases.

In support of its request to use English as the language of the proceeding, the Complainant has argued that, inter alia:

(a) The Complainant and its representative are French companies. To conduct the proceeding in Chinese will involve a great deal of additional expense and delay due to the need for translation.

(b) The disputed domain name has been registered in Latin characters. The Respondent is the holder of many domain names composed of English terms (Annexes 2 to 16 of the Complaint). The Respondent has the necessary knowledge of English.

(c) The English language is regularly used as the primary language in which international commerce is conducted.

Article 31 of the Rules provides, inter alia, that in all cases, the Panel shall ensure that the Parties be treated with equality. It also provides that the Panel shall ensure that the proceedings take place with due expedition.

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’ abilities to understand and use the proposed language, time and costs.

In addition to the above, the Panel has also taken into consideration the fact that the Center has communicated with the Parties in both Chinese and English as well as advised the Respondent in the notification of the Complaint of his rights to make representation on choice of the language of the proceeding and the Response may be filed in either Chinese or English but the Respondent has not responded.

Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to either Party for the proceeding to be conducted in English and for its decision to be rendered in English.

Accordingly, the Panel determines that the language of this administrative proceeding should be English.

6.3. Substantive Issues

In rendering its decision, the Panel must adjudicate the dispute in accordance with Article 31 of the Rules which provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Article 35 of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions of these Rules and Supplemental Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. Article 34 of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with any provisions established by these Rules and Supplemental Rules or any of the time periods fixed by the Panel, the Panel shall proceed to a decision on the complaint.

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

(i) The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

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

(iii) The Respondent has registered or has been using the disputed domain name in bad faith.

Article 7 of the Policy provides that the Complainant and the Respondent shall bear the burden of proof for their own claims. Having considered the Complaint, the amended Complaint and the annexes thereto, the Panel has made the following findings.

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trademark NODALETO by reason of its registration of the mark NODALETO and device (with the word “Nodaleto” as a principal part) as recited in Section 4 above.

Furthermore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark NODALETO despite the addition of the ccTLD “.cn” as suffix.

After removing the suffix “.cn”, effectively the word “nodaleto” is seen entirely. The Complainant’s trademark NODALETO is clearly recognizable in the disputed domain name.

Earlier panels have disregarded the TLD part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark or name in issue.

The Panel therefore holds that the Complaint has fulfilled the first condition of Article 8 of the Policy.

B. Rights or Legitimate Interests

The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Once such prima facie case is made, the burden will shift to the Respondent to produce evidence that he has rights or legitimate interests in the disputed domain name.

In the present case, the Complainant has asserted registration and use of the registered trademark NODALETO and device and use of Nodaleto as a principal part of its domain name <nodaleto.com> before the Respondent’s registration of the disputed domain name <nodaleto.cn>on April 15, 2020. Further, the Panel notes that the name of the Respondent “孟祥东” does not correspond in anyway with the disputed domain name. From the evidence available to the Panel, the Respondent does not appear to be commonly known as <nodaleto.cn >. There is also no evidence available to demonstrate the legitimate noncommercial or fair use of the disputed domain name by the Respondent nor a bona fide offering of goods or services on the website to which the disputed domain name resolves.

The Complainant has confirmed that it has no relationship or business connections with the Respondent and therefore has not licensed or otherwise authorised the Respondent to use its trademark.

The Panel also cannot see any plausible explanation as to why it was necessary for the Respondent to adopt the trademark NODALETO in the disputed domain name.

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel accordingly finds that the Complaint has fulfilled the second condition of Article 8 of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy sets out four circumstances which shall be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) The purpose of registering or acquiring the disputed domain name is to sell, rent or otherwise transfer the disputed domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;

(b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;

(c) The disputed domain name holder has registered or acquired the disputed domain name for the purpose of damaging the complainant’s reputation, disrupting the complainant’s normal business or creating confusion with the complainant’s name or mark so as to mislead the public;

(d) Other circumstances which may prove the bad faith.

The Panel is satisfied that at the time when the Respondent registered the disputed domain name on April 15, 2020, a date considerably later than the Complainant’s registration and use of its trademark NODALETO and its domain name <nodaleto.com>, it was done with knowledge of the Complainant’s business and the Complainant’s use of the NODALETO trademark. This is so particularly when the disputed domain name appears to be a deliberate choice to copy and adopt the word “nodaleto” which is an invented word created by mixing up various elements or syllables in the surname of the Complainant’s CEO, rendering it very unique and associating it exclusively to the Complainant. Such deliberate act signals an intention on the part of the Respondent to confuse users seeking the Complainant.

The disputed domain name resolves to a website offering it for sale at RMB 5,000, and it is also being offered for sale on other websites at the same price. Further, it is noted that the Respondent has registered/owns over 19,000 domain names. On the basis of the evidence adduced, the Panel finds that the purpose of registering the disputed domain name is to sell or otherwise transfer the disputed domain name registration to the Complainant or a competitor of the Complainant, and to obtain unjustified benefits. The presumption under Article 9(a) of the Policy is invoked.

The Panel concludes that the disputed domain name was registered and have been used by the Respondent in bad faith.

The Panel accordingly finds that the Complaint has fulfilled the third condition of Article 8 of the Policy.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <nodaleto.cn> be transferred to the Complainant.

C. K. Kwong
Sole Panelist
Date: March 18, 2021