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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Whirlpool Properties, Inc. , Whirlpool Corporation v. Hu Xihu

Case No. D2008-0710

1. The Parties

Complainants are Whirlpool Properties, Inc. and Whirlpool Corporation, Michigan, United States of America, represented by Baker & McKenzie, Hong Kong, SAR of China.

Respondent is Hu Xihu, Qingdao, China.

2. The Domain Name and Registrar

The disputed domain name <whirlpuul.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2008. On May 7, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On May 8, 2008, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amended Complaint on May 15, 2008. The Center verified that the amended 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2008. Respondent did not submit any response. Accordingly, the Center notified espondent’s default on June 13, 2008.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on June 23, 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

Complainants in this administrative proceeding are Whirlpool Corporation (“Whirlpool”) and Whirlpool Properties, Inc. (“Whirlpool Properties”). Whirlpool is the parent company that manufactures and sells WHIRLPOOL brand appliances. Whirlpool Properties is the wholly-owned subsidiary of Whirlpool. Whirlpool is a company based in the United States of America that manufactures and sells around the world electrical products and home appliances under the marks / names WHIRLPOOL, 惠而浦 or other designs or logos bearing the same.

Since 1957, Whirlpool has begun trading under or with reference to the name or mark WHIRLPOOL. Since 1991, Whirlpool and its related companies have also begun using the Chinese name or mark 惠而浦 in countries which have Chinese-speaking population. The Chinese mark 惠而浦 is pronounced as “hui-er-pu” in Mandarin and “wai-yi-po” in Cantonese (a Chinese dialect spoken mainly by people originating from Guangdong province in China).

Whirlpool Properties has rights in the marks and names WHIRLPOOL and 惠而浦 through its use and registration of these marks in many different classes and countries. Whirlpool Properties owns over 750 trade marks for the WHIRLPOOL brand in over 130 countries. Whirlpool is licensed by Whirlpool Properties to use the registered trade marks.

In particular, Whirlpool Properties has obtained registrations for the mark WHIRLPOOL and the corresponding Chinese mark 惠而浦 or marks bearing the same in various classes in Hong Kong, SAR of China and China. Complainants enjoy a very strong brand history and presence in Hong Kong, SAR of China and in the Asian region and it first established its branch office Whirlpool (Hong Kong) Limited (“Whirlpool HK”) in Hong Kong, SAR of China in 1989.

Complainants and its group have registered a large number of domain names under different top level and country code domains including <whirlpool.com>, <whirlpool.com.sg>, <whirlpool.com.tw>, <whirlpool.com.au>, <whirlpool.co.nz>, <whirlpool.us>, <whirlpool.net>, <whirlpool.org>, <whirlpool.cc>, <whirlpool.info>, <whirlpool.com.hk> and <whirlpool.hk>. When conducting a Google search against the mark WHIRLPOOL on the Internet, almost all of the hits are in relation to Whirlpool.

Complainants first came across the registration of the Disputed Domain Name sometime in 2006. The Disputed Domain Name is registered in the name of Respondent. A visit to the website set up under the Disputed Domain Name immediately directs to the website “www.whirlpuul.cn”. The English and Chinese names of “Whirlpuul Enterprises (International) Limited” (“WEIL”) and “香港惠而浦企业（国际）有限公司” are being displayed on <whirlpuul.cn>. The website contains information about various kitchenware incorporating or offered under or with reference to the marks WHIRLPUUL and 惠而浦. According to information obtained at the Hong Kong Companies Registry, WEIL was incorporated in Hong Kong, SAR of China on April 11, 2006 with the corresponding Chinese name “惠而浦企業(國際)有限公司”.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which Complainants have rights

(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))

Complainants contend that the part “Whirlpuul” of the Disputed Domain Name is identical with or confusingly similar to Complainants’ trade mark WHIRLPOOL or the other marks bearing “Whirlpool” registered in Hong Kong, SAR of China by Whirlpool Properties. The only distinguishable part of the Disputed Domain Name is the double “u” Roman Characters versus the double “o” Roman Characters in Complainants’ trade mark “Whirlpool”. However, the Disputed Domain Name is as a whole phonetically identical and visually similar to Complainants’ WHIRLPOOL trade mark. Complainants, through its various subsidiaries world-wide, have acquired substantial reputation in Hong Kong, SAR of China and in the world for its WHIRLPOOL through use and promotion and enjoy exclusive proprietary rights in such mark.

Complainants assert that courts and administrative panels have recognized that consumers expect to find a trade mark owner on the Internet at a domain name address comprising of the company’s name or mark. Complainants cite Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316, 1326 (9th Cir. 1998); Dr. Michael Crichton v. Alberta Hot Rods, WIPO Case No. D2002-0872.

Complainants further assert that when comparing a disputed domain name and a trade mark, the addition of the “.com” suffix is treated as a domain name indicator and has no bearing in determining whether the domain name is identical or confusingly similar to the trade mark. Complainants submit that the Disputed Domain Name is confusingly similar to Complainants’ mark or name in which Complainants have rights. Consumers seeing the Disputed Domain Name would be confused and misled into believing that the Disputed Domain Name refers to a website operated by Complainants – which is not the case.

Respondent has no rights or legitimate interests in respect of the Domain Name

(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))

Complainants contend that Respondent has no rights or legitimate interests in respect of the Domain Name for the following reasons:

1. Respondent has no connection or affiliation with Complainants and has not received any licence or consent, express or implied, to use the WHIRLPOOL mark or a mark which is confusingly similar to the WHIRLPOOL mark in a domain name or in any other manner.

2. Complainants believe that Respondent is not and has never been commonly known by the Disputed Domain Name.

3. Google searches against the name “Whirlpuul Enterprises (International) Limited” that appears on the website operating under the Disputed Domain Name also failed to produce any hits.

4. An online trade mark search has also been conducted in Hong Kong, SAR of China, and there is no trade mark application or registration filed in the name of Respondent or WEIL. Therefore, Respondent has not been using, nor had he even registered, the Domain Name before Complainants acquired rights in their mark.

5. Respondent is operating a website under the Disputed Domain Name under the English and Chinese name of WEIL to provide information about the sales of various kitchenware products by or with reference to marks WHIRLPUUL and 惠而浦 (pronounced as “hui-er-pu” in Mandarin). The name of WEIL which bears “Whirlpuul” and “惠而浦” in Chinese appears in the website under the Disputed Domain Name together with the marks WHIRLPUUL or 惠而浦, which are all identical or confusingly similar to Complainants’ name or marks. Complainants submit that the use of these marks is by no means co-incidence and is calculated to deceive the public. Kitchenware products are highly relevant to the products which Complainants and their group have been offering and supplying to customers worldwide since commencing business. The use of the Dispute Domain Name in the present manner jeopardizes the legitimate interest of Complainants.

6. Respondent’s misappropriation of the Disputed Domain Name was no accident. In the case of famous mark, like the mark in the present case, it is “not one trader would legitimately choose unless seeking to create an impression of an association” with the Complainants. Complainants cite Telstra Corporation Limited v. Nuclear Mashmallows, WIPO Case No. D2000-0003.

The Domain Name was registered and is being used in bad faith

(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))

Complainants contend that the Disputed Domain Name was registered and is being used in bad faith for the following reasons:

1. It is well-established in legal principle and under the Policy (section 2) that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the instant case, Complainants have registered and extensively used the mark WHIRLPOOL in Hong Kong, SAR of China and in the neighboring region. Given the reputation of Complainants, it is inconceivable that Respondent was not aware of Complainants’ marks when the Disputed Domain Name was registered in view of the existing businesses of Complainants in Hong Kong, SAR of China, Asia and worldwide.

2. Complainants’ rights in the WHIRLPOOL mark also would have been obvious through basic domain name searches and other searches at different trade marks offices whose records are readily accessible on-line.

3. It is obvious from the information on Respondent’s home page that Respondent is supplying various kitchenware. Complainants are famous in the home electrical appliance field and have been established their business for nearly a century. It is no doubt that kitchenware and electrical appliance share similar trade channels and the same target group of consumers. In the present case, Respondent registered the Disputed Domain Name for the purpose of promoting his own business by riding on the Complainants’ reputation and goodwill.

4. Complainants assert that the use of Disputed Domain Name and the marks WHIRLPUUL and 惠而浦 in Chinese on the website operating under the Disputed Domain Name by Respondent is to divert users from Complainants’ websites to his own website for his own commercial gain, at the possible expense of Complainants and this is clear evidence that the Disputed Domain Name is being used in bad faith. Administrative panel decisions have acknowledged that including links to websites selling products that compete with those of Complainants is indicative of bad faith. See Technology Properties, Inc. v. Personal, NAF Case No. FA96569.

5. Respondent has no legitimate interest in the Disputed Domain Name. Even if Respondent was not using the Disputed Domain Name to divert Internet users to a competing website, the mere fact of diversion – regardless of the content of Respondent’s website – is evidence of bad faith use of a domain name. Prior UDRP panels have found that this type of activity – using a domain name comprised of a well known trade mark to attract users to the registrant’s website –constitutes a bad faith use of the domain name. See Big Dog Holdings, Inc. d/b/a Big Dog Sportswear v. Red River Farms, Inc., NAF Case No. FA93554.

6. Further or in the alternative, Respondent must have expected that any use of the Disputed Domain Name would cause harm to Complainants. The Disputed Domain Name contains a mark that is so “obviously indicative” of Complainants’ products and services that Respondent’s use of the Disputed Domain Name would “inevitably lead to confusion of some sort.” See AT&T Corp.v. Fred Rice, WIPO Case No. D2000-1276, at paragraph 6; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain transfer of the Disputed Domain Name, Complainants 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 Complainants have rights; and

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 Complainants to establish that all these three elements are satisfied.

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, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

On the basis of the evidence introduced by Complainants 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

Complainants have adduced evidence to demonstrate that they have registered trade mark rights and continue to have such rights in the WHIRLPOOL marks in over 130 countries in relation to electrical products and home appliances. The Panel rules that Complainants have rights and continue to have such rights in the relevant WHIRLPOOL marks.

The disputed domain name consists of a word “whirlpuul” and the suffix “.com”. In assessing the degree of similarity between Complainants’ trade marks and the Disputed Domain Name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainants’ WHIRLPOOL marks and the Disputed Domain Name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainants’ products and services.

The Disputed Domain Name incorporates a term that is the same as Complainants WHIRLPOOL marks except for a mis-spelling of “pool” to “puul”. The mis-spelling of “pool” to “puul” is insignificant and does not alter the overall impression that Complainants’ distinctive mark has been incorporated into the Disputed Domain Name. The Panel finds that the Disputed Domain Name is phonetically identical and visually confusingly similar to Complainants’ WHIRLPOOL marks. It is also accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the Disputed Domain Name is identical or confusingly similar to Complainants’ trade marks in which Complainants have rights.

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

B. Rights or Legitimate Interests

The burden of proof on this element lies with Complainants. 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 the respondent to rebut the 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 trademark 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 trademark or service mark at issue.

The Panel finds that Complainants have 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 “whirlpuul” in its business operations;

2. There was no evidence to show that Complainants have 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. Quite contrary, there is strong evidence that Respondent is selling goods which compete with Complainants on the website associated with the Disputed Domain Name and that Respondent attempts to pass off these goods as those of Complainants or associated with Complainants. Such use of Complainants’ English trade marks WHIRLPOOL and the Chinese trade mark 惠而浦 infringe Complainants’ trade mark rights and cannot confer legitimate rights on Respondent;

4. Complainants and their WHIRLPOOL marks enjoy a worldwide reputation including China, with regard to its electrical products and home appliances. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the WHIRLPOOL marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainants.

The Panel finds for Complainants 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 trademark 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 trademark 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 Complainants’ 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. Taking into account the worldwide reputation of Complainants and their WHIRLPOOL marks, as well as the high level of notoriety of Complainants and their marks in the Chinese market (evidenced by the substantial business presence and extensive promotion and marketing activities), the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainants’ trade mark rights at the time of the registration of the Domain Name. The Panel’s conclusion that Respondent ought to have knowledge of Complainants’ WHIRLPOOL marks at the time of registration is further buttressed by the fact that in this day and age of the Internet and with businesses in general having an Internet presence, anyone who conducts a simple search exercise over the Internet can come the conclusion that the trade marks WHIRPOOL and 惠而浦 belongs to Complainants and Respondent should not adopt a Domain Name which incorporates elements that are identical or confusingly similar to Complainants’ marks. In this Panel’s view, it is the duty of Respondent to undertake due diligence to ensure that the selection or choice of domain name does not infringe the intellectual property rights of third parties. Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “whirlpool” in Complainants WHIRLPOOL marks which have acquired a worldwide reputation in the home appliances and kitchenware market is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainants. 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 Complainants’ 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 Complainants and its products and services, and profit there from.

Complainants have adduced evidence to prove that by using a confusingly similar Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website which sells goods and products that are in competition with Complainants. In the absence of persuasive evidence and explanation from Respondent, the Panel concludes that Respondent by using a Domain Name that is confusingly similar to Complainants’ famous trade marks hopes to lure Internet users to its website which sells similar and competing goods. Thereby giving Internet users the false impression that Respondent’s Domain Name may in some way related to or associated with Complainants. The Panel’s findings are further buttressed by the following evidence that Respondent is operating a website under the Disputed Domain Name under the English and Chinese name of WEIL to provide information about the sales of various kitchenware products by or with reference to marks WHIRLPUUL and 惠而浦. The name of WEIL which bears “Whirlpuul” and “惠而浦” in Chinese appears in the website under the Disputed Domain Name together with the marks WHIRLPUUL or 惠而浦, which are all identical or confusingly similar to Complainants’ name or marks. The Panel is of the view that even if it cannot be established that Respondent has successfully lured or diverted Internet traffic destined for Complainants’ official or authorized websites, Respondent’s act of using a confusingly similar domain name and incorporating Complainants’ WHIRLPOOL and 惠而浦 trade marks on its website without the consent of Complainants, are by themselves strong indication that Respondent is using the Disputed Domain Name in bad faith.

In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the Disputed Domain Name and the conduct of Respondent as far as the website on to which the Domain Name resolves are indicative of registration and use of the Disputed Domain Name in bad faith.

The Panel finds for Complainants 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, <whirlpuul.com> be transferred to the Complainant, Whirlpool Properties, Inc.

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Susanna H.S. Leong
Sole Panelist

Dated: July 13, 2008