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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Danzas Holding AG , DHL Operations B.V. v. Ma Shikai

Case No. D2008-0441

 

1. The Parties

Complainants are Danzas Holding AG, Basel, Switzerland and DHL Operations B.V., Amsterdam, the Netherlands (hereinafter, “Complainant”). Complainant is represented by Jonas Rechtsanwaltsgesellschaft mbH of Germany.

Respondent is Ma Shikai, bao ding, China.

 

2. The Domain Name and Registrar

The disputed domain name <danzas.mobi> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2008. On March 25, 2008, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the domain name at issue. On March 26, 2008, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in Chinese and English, and the proceedings commenced on March 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2008.

It is noted that the Complaint has been submitted in English. Pursuant to Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. According to information received by the Center from the concerned Registrar, the language of the registration agreement for the disputed domain name is Chinese. Complainant has submitted a request that English be the language of the proceedings. On April 1, 2008, Respondent sent an email written in Chinese and English to indicate his decision to participate in the present administrative proceedings and to submit a Response. However, Respondent indicates that he has language difficulties with the Complaint and requests the use of Chinese as the language of the present administrative proceedings. The Center acknowledged receipt of Respondent’s email correspondence of April 1, 2008 and given the circumstances of the present case, the Center decided 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 Panel has discretion to determine the language of proceedings and it may choose to write a decision in either language, or request translation of either party’s submissions.

Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2008.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on April 24, 2008. 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

Complainant’s company was registered in the Swiss Company Register for the Canton Basel-Stadt under No. CH-270.3.001.362-7 on December 30, 1902 and its trading name is “Danzas Holding AG”. Presently, Complainant is one of the leading logistics companies worldwide and a world leader in air and ocean freight.

Complainant is the sole legal holder of numerous trade marks worldwide which consists in the designation “Danzas” or contains this designation as the common core element. Complainant’s trade mark DANZAS is registered in many countries including Germany; the United Kingdom of Great Britain and Northern Ireland; Australia; European Union; Switzerland; Hong Kong, SAR of China; The Netherlands and China, to name a few.

The parent company of Complainant’s group, Deutsche Post AG, is also the owner of various domain names including the mark DANZAS such as <danzas.com>; <danzas.biz>; <danzas.net>; and <danzas.info>.

The disputed domain name was registered on November 4, 2006.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainant contends that the disputed domain name is identical to its DANZAS trade mark for the following reasons:

1. The disputed domain name fully incorporates Complainant’s DANZAS trade mark.

2. It is commonly accepted that generic top level domains (gTLDs) such as “.com”; “.net”; or “.mobi” do not produce any distinctiveness and the mere addition of the gTLDs has no distinguishing capacity in the context of domain names and do not alter the value of the trade mark represented in a domain name.

3. Complainant cites a previous UDRP decision Danzas Holding AG et al v. Euro Plus Cargo SLU, WIPO Case No. DBIZ2002-00003 has held that the disputed domain name <danzas.biz> is identical to the DANZAS mark except for the gTLD denomination “.biz”, which shall be disregarded for the purposes of the administrative proceedings.

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name for the following reasons:

1. Before Respondent became aware of the present dispute, Respondent had not used or made demonstrable preparations to use the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods and services.

2. By the time of the commencement of the present proceeding, Respondent or any other person not connected to Complainant has not been commonly known under the domain name <danzas.mobi>.

3. Neither Respondent nor any other person not connected to Complainant used the disputed domain name for any legitimate, non-commercial or fair purpose.

4. Respondent does not own any rights in the name or mark DANZAS.

5. Complainant have not licensed or otherwise permitted Respondent to use their company name or trade marks or to apply for the registration of the domain name in dispute and thus, Respondent should not be considered as having any legitimate interest in the distinctive worldwide trading name, company name and trade mark DANZAS.

Registered and Used in Bad Faith

Complainant contends that the disputed domain name has been registered and is being used by Respondent in bad faith for the following reasons:

1. Neither Respondent nor any other person not connected to Complainant had a legitimate interest in registering Complainant’s distinctive and world famous DANZAS mark as a domain name. The fact that the domain name is currently not connected to an active website does not affect the finding of bad faith under the Policy and previous UDRP panel decisions have affirmed this fact.

2. Complainant’s DANZAS mark has been widely used by Complainant for many years in connection to its goods and services and thus it is a well known mark throughout the world. It is inconceivable that the registration for the disputed domain name was made without full knowledge of the existence of Complainant and its mark.

3. Respondent responded to Complainant’s cease and desist letter of February 25, 2008 by offering the disputed domain name for sale at US$500 which clearly exceeds Respondent’s out of pocket expenses directly related to the domain name.

4. Respondent’s contact details as indicated in the WhoIs database are incomplete or incorrect. Previous UDRP panel decisions have held that the fact Respondent has used incomplete contact information indicating an obviously non-existing fax number when registering the domain name is further evidence of bad faith. See CC Computer Consultants GmbH and WAFA Kunststoffechnik GmbH v. APG Solutions & Technologies, WIPO Case No. D2005-0609.

B. Respondent

Respondent did not reply to 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 Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English is the language of the present proceeding because (a) the disputed domain name comprises of Latin characters; (b) Complainant is not able to communicate in Chinese and thus, if the Complaint had to be submitted in Chinese, the administrative proceedings would be unduly delayed and Complainant would have to incur substantial translation costs; and (c) there is evidence which clearly proves that Respondent has sufficient capability to communicate in English, in particular Respondent responded to Complainant’s cease and desist letter of February 26, 2008 in English and offered the disputed domain name for sale.

After considering the circumstances of the present case and the submission of Complainant’s request, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“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.”

Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; and (b) there is evidence which clearly proves that Respondent has sufficient capability to communicate in English, in particular Respondent responded to Complainant’s cease and desist letter of February 26, 2008 in English and offered the disputed domain name for sale. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent on being notified of the present proceedings wrote an email in Chinese and English to the Center indicating his intention to make a Response to Complainant’s Complaint. Respondent thus displayed adequate language proficiency to respond and to communicate in English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision will be rendered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;

2. Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the 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. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the DANZAS mark in many countries throughout the world including China in relation to logistics and freight services. The Panel rules that Complainant has rights and continues to have such rights in the relevant DANZAS mark.

The disputed domain name consists of Complainant’s DANZAS mark in its entirety with the suffix “.mobi”. The Panel finds that the term “danzas” in Complainant’s DANZAS mark is an arbitrary word and it is the distinctive portion of Complainant’s mark and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “danzas” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. It is also an accepted principle that the addition of suffixes such as “.mobi” being the generic top-level domain is not a distinguishing factor. The confusion generated by Respondent’s domain name is further heightened by the fact that Complainant is the owner of domain names such as <danzas.com>; <danzas.biz>; <danzas.net>; and <danzas.info> and has been using these domain names to market its goods and services on the Internet. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant’s trade marks in which Complainant has rights.

The Panel finds for Complainant on the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of “danzas” in its business operations;

2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. Complainant and its DANZAS mark enjoy a reputation in many countries throughout the world including China, with regard to its logistics and freight services. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the DANZAS mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.

The Panel finds for Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the Panel can also constitute registration and use of the domain name in bad faith by Respondent in the appropriate cases.

One important consideration in the Panel’s assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant’s rights in the trade mark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trade mark rights at the time of the registration of the domain name. The Panel’s findings are further buttressed by the following evidence that:

(a) Complainant’s DANZAS mark is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services;

(b) Respondent has registered the disputed domain name <danzas.mobi> on November 4, 2006 and it has been almost 2 years since its registration but Respondent’s domain name remains connected to an inactive website. There appears to be no genuine intention on the part of Respondent to use the disputed domain name for bona fide offerings of goods or services on the Internet. Previous UDRP panel decisions have similarly held that passive holding of the disputed domain name is indicative of registration and use of the domain name bad faith;

(c) Respondent upon receiving the cease and desist letter from Complainant, proceeded to offer the disputed domain name for sale to Complainant. This fact, coupled with the other circumstances in the present case, is again indicative of registration and use of the disputed domain name by Respondent in bad faith.

Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the DANZAS mark which has acquired a substantial reputation in a logistic and freight services market is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and to profit there from.

The Panel finds for Complainant on the third part of the test.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <danzas.mobi> be transferred to Complainant.

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Susanna H.S. Leong
Sole Panelist

Dated: May 12, 2008