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Melbourne 2006 Commonwealth Games Corporation v. B & M Group Of Companies Pty Ltd [2005] GENDND 477 (15 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Transtrands Handelsaktiebolag v. Jack Terry

Case No. D2005-0057

1. The Parties

The Complainant is Transtrands Handelsaktiebolag, Box 6006, 102 31 Stockholm, Sweden, represented by Christer Hamrin, Sweden.

The Respondent is Jack Terry, Rm 1528 Rujin Building, 205# Maoming South Road, Shanghai Shanghai 200020, China.

2. The Domain Name and Registrar

The disputed domain name <expose.com> is registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2005. On January 18, 2005, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 19, 2005, Bizcn.com, Inc. 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 administrative, billing, and technical contact. On January 20, 2005, the Center notified the Complainant that the language of the registration agreement for the disputed domain name is Chinese. Accordingly, the Center requested the Complainant to provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English, failing which the Complainant must submit a Chinese translation of the Complaint. In response to the language of proceeding notification by the Center, the Complainant requested and obtained an extension to submit the translated Complaint. On January 27, 2005, the Complainant made a submission regarding the language of the proceeding. Considering the circumstances of the case, the Center decided to accept the Complaint in the English language and commence the proceeding. It informed Parties that it would accept a Response from the Respondent in either the Chinese or English language, would then appoint a Panel familiar with both languages and would allow the Panel to make the decision as to the correct language of the proceeding. 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, and the proceedings commenced on February 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 28, 2005.

The Center appointed Susanna H.S. Leong as the Sole Panelist in this matter on March 7, 2005. 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 is the owner of the registered trademark EXPOSE. This trademark is registered since 1993 in a number of countries including France, Belgium, Luxembourg, the Netherlands (Benelux), Sweden, Denmark, Italy and Australia. In addition, Complainant holds a number of trademarks of EXPOSE both registered and pending registrations in other countries as well.

Furthermore, the Complainant’s registered and well-known trademark EXPOSE has been in use since 1993 for a magazine that has since its creation sold over a million copies in over 53 countries.

The Complainant was theregistrant of the disputed domain name <expose.com> in May 2000 under the company name Vanity Management AB, a Swedish corporation. Vanity Management AB was later merged into “Transtrands Handelsaktiebolag” and all rights that Vanity Management AB held then became the Complainant’s through the merger.

The Complainant later signed an agreement with Kokoda Publishing, Inc., a US corporation based in California, and transferred the disputed domain name to “Kokoda” who became the registrant. The agreement is a complex licensing agreement including an option right for the Complainant to re-transfer the Domain Name under certain contractual situations. Complainant has remained the owner of the trademark EXPOSE since 1993.

5. Parties’ Contentions

A. Complainant

I. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the disputed domain name is identical to the EXPOSE trademark that Complainant has registered in several countries.

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

The Complainant contends that the Respondent is currently using the Domain Name for a site called “Shanghai Expose Computer Systems”. The Complainant has not found any valid registration by Respondent for the trademark EXPOSE in China or any other country. There is also no evidence that the Respondent is known by the disputed domain name which would legitimize and override the Complainant’s rights in an 11-year-old trademark. Furthermore, the Complainant argues that the Respondent’s site appears to have been created only to give an “impression“ of its services. The Complainant asserts that the links on the Respondent’s website lead to nowhere and that the phone number listed on the site, which is the same as in the Whois, does not exist. In summary, the Complainant contends that even if the Respondent’s site worked fully, the Respondent has no rights or legitimate interest in the Domain Name.

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

The Complainant points out that circumstances of bad faith registrations cited in the Policy are examples only and without limitation. Consequently, because of the circumstances that have been stated in the Complaint, the Complainant believes that the Respondent has registered the Domain Name in bad faith.

Furthermore, the Complainant draws attention to the fact that the Domain Name was fraudulently transferred to the Respondent. Indeed, the Complainant was informed by Kokoda that the disputed domain name was hijacked and transferred from Kokoda to “Jack Terry” without its consent or knowledge. The Complainant asserts that it has no reason not to believe the information given by Kokoda. The matter is now turned over to the Federal Investigation Bureau, a law enforcement unit in the United States of America for an investigation.

As a result of the Complainant’s rights in its trademark EXPOSE and other rights mentioned in the Complaint, the Complainant affirms its rights in the disputed domain name. Although the Respondent goes by the name “Jack Terry”, the Complainant does not believe that such a person actually exists by that name and therefore does not believe that the Respondent can show that the Domain Name was registered in good faith.

The Complainant concludes that, based on all the facts and circumstances in the Complaint, it may be inferred the Respondent has registered and is using the Domain Name in bad faith in a most serious manner.

B. Respondent

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

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. On January 20, 2005, the Center sent a notification to the Complainant concerning the Language of Proceeding. 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. The Center has been informed by the registrar concerned that the language of the registration agreement for the disputed domain name is Chinese. Accordingly, the Center requested the Complainant to provide the Center with satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. If the Complainant could not do so, then the Center would request that the Complaint be translated into Chinese and re-submitted to the Center.

In response to the Center’s notification, the Complainant filed on January 27, 2005 a Submission regarding the Language of Proceedings in accordance with the Policy. The Complainant submits that for the reasons cited below the proceedings ought to be held in English:

(a) Inability to communicate with the Respondent

The Complainant states that the Respondent has shut down the website under the disputed domain name immediately after the present proceeding was launched. The email accounts and the telephone and facsimile numbers given by the Respondent in the WHOIS do not work. The Respondent’s address also appears to be fictitious: indeed, when the Complainant attempted to send a hard copy of the Complaint via courier to the Respondent, the Complaint was returned as the Respondent was unknown at the address in question.

(b) The Respondent’s presumed knowledge of the English language

The Complainant argues that the Respondent has a fully English sounding name and the disputed domain name is an English word. The Complainant further asserts that the previous Registrar, Network Solutions, has found that the disputed domain name was transferred by a “Jack Terry” in their system located in the United States of America and which working language is English. The Complainant contends that it is impossible for a person to undertake a complicated fraudulent transfer of a domain name within a computer system which working language is English unless he has knowledge of the English language. Given that fact that the Respondent could not be found or contacted, the Complainant further argues that there is no valid reason to believe that the Respondent is even based in China and/or is a Chinese only speaking person or entity. The Complainant contends that iIn all probability the Respondent could in fact be English and the fact that the registrant/registrar agreement is in Chinese does not establish that the Respondent is Chinese-speaking only and would have no knowledge of English.

The Complainant concludes by arguing that it would be unfair to request that the proceeding be in the Chinese language. It would indeed be both impractical and a financial burden for the Complainant. It would also be unfair to the Complainant if, despite the Respondent’s disregard of its obligations under the registration agreement to give correct and truthful contact information in case of any legal proceedings, the Respondent were accorded with an advantage that would force the Complainant to incur the costs of having a proceeding in a language the Complainant has little knowledge in.

After considering the submissions of the Complainant on the issue of the language of the proceeding, the Panel finds that the proceeding should be conducted in the English language and the reasons for its decision are as follows:

(i) The Panel’s discretion under the UDRP

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, the general rule is that the parties are at liberty to agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised 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 be not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.

(ii) The Circumstances of this Case

In this particular case, the Respondent appears to have given fictitious or false contact information and remains uncontactable by the Complainant. The Panel is satisfied that the Complainant has exhausted all reasonable options to establish contact with the Respondent on this issue of the language of the proceeding. The Complainant has established a strong prima facie case that the Respondent has engaged in fraudulent dealings in the disputed domain name and consequently will not want to be found. It is for apparently obvious reasons that the Respondent has made no response whether on the issue of the language of the proceeding or the allegations contained in the Complaint lodged by the Complainant. To rule that the language of the proceeding is Chinese under such circumstances would be unfair to the Complainant and would cause substantial delay in the proceedings resulting in unnecessary costs incurred on the part of the Complainant. Therefore, in consideration of the above circumstances, the Panel hereby decides that, in accordance to paragraph 11 of the Rules, English shall be the language of the present administrative proceeding and the decision shall thus be submitted in English.

B. Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

(i) Identical or Confusingly Similar

Having reviewed the documents adduced by the Complainant, the Panel is satisfied that the Complainant has established its rights in the trademark EXPOSE. The Panel also finds that the disputed domain name <expose.com> is absolutely identical to the Complainant’s trademark EXPOSE, both visually and phonetically.

(ii) Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name. On the issue of burden of proof, a number of WIPO decisions have held that “once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing.” See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 and International Hospitality Management-IHM S.p.A v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.

The Complainant asserts that there is no valid registration by the Respondent for the trademark EXPOSE in China or any other country, and there is no evidence that the Respondent is known by the disputed domain name which would confer on the Respondent any legitimate rights to the disputed domain name. The Panel is of the view that the Complainant has established a prima facie case and it is for the Respondent to rebut the allegations. Unfortunately, the Respondent has not submitted a Response and consequently, the Respondent has failed to invoke any of the circumstances that could have demonstrated any rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the Domain Name pursuant to paragraph 4(b) of the Policy.

(iii) Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the Domain Name was registered and is being used in bad faith by the Respondent. Paragraph 4(b) of the Policy sets out four circumstances which shall be evidence of the registration and use of a domain name in bad faith. These four circumstances are, however, non-exhaustive. (BolognaFiere S.p.A. v. Bonopera Daniele, WIPO Case No. D2003-0295).

Having considered the submissions and the evidence adduced by the Complainant in the Complaint and the further submissions contained in the Language of Proceedings Submission dated January 27, 2005, the Panel holds that the disputed domain name has been registered and is used by the Respondent in bad faith. The reasons for the decision are as follows:

(a) the Respondent did not provide in good faith truthful contact information of himself in the registration of the disputed domain name;

(b) evidence has been adduced by the Complainant to show that the registration of the disputed domain name by the Respondent was effected in a fraudulent manner when the Respondent entered into Network Solutions computer system without permission to effect the change; and

(c) since the commencement of the present proceedings, the Respondent has remained elusive and uncontactable. He has also failed to enter a defence to the allegations made against him. Under such circumstances, the Panel is entitled to draw the appropriate inferences of the Respondent’s conduct;

(d) the history of the disputed domain name registration, together with the Respondent’s default and conduct in general, contribute to creating the impression that the Responsent most likely had some knowledge of the Complainant and/or the Complainant’s trademark at the time of the registration of the disputed domain name.

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 <expose.com> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: March 21, 2005