The Hain Celestial Group, Inc. v. Chen Yu
Claim Number: FA1611001704285
PARTIES
Complainant is The Hain Celestial Group, Inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Chen Yu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earthsbest.store>, registered with Chengdu West Dimension Digital Technology Co., Ltd. (the “Registrar”).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2016; the Forum received payment on November 22, 2016. The Complaint was submitted in English.
On November 22, 2016, the Registrar confirmed by e-mail to the Forum that the <lwyse.com> domain name is registered with the Registrar and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Registrar’s registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 29, 2016 the FORUM issued a deficiency letter to Complainant, notifying Complainant that the language of the registration agreement is Chinese, and requesting Complainant to either 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the Complaint to explain why Respondent is capable of understanding English and therefore, the proceeding should be conducted in English.
On December 1, 2016 Complainant filed an Amended Complaint which included a request for the proceeding to be conducted in English.
On December 2, 2016, the Forum served the English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 22, 2016 by which Respondent could file a Response to the Complaint.
On December 18, 2016, Respondent filed a Chinese and English language Response.
On December 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name has been registered and is being used in bad faith.
Complainant asserts rights obtained through registration and use in the trademark EARTH’S BEST (the “Trademark”), a trademark used since 1985 in connection with Complainant’s line of organic infant nutrition and natural baby care products. Complainant owns a number of trademark registrations in the U.S. and worldwide for the Trademark, including U.S. Reg. No. 1,560,438 (registered on October 17, 1989). Complainant does not have any registrations for the Trademark in Mainland China, but it does have registrations for the Trademark in the Hong Kong Special Administrative Region of China (including Reg. No. 301540520, registered on February 8, 2010), the Macau Special Administrative Region of China (including Reg. No. N/47530, registered on May 20, 2010), and also in Taiwan Province of China (including Reg. No. 00685763, registered on August 1, 1995).
Complainant asserts that the disputed domain name has previously been used for an English language website with sponsored links to websites offering for sale its competitors’ products (the “Website”).
B. Respondent
Respondent contended in the Response as follows:
1. The disputed domain name was legitimately registered, and Respondent has no relationship with Complainant;
2. Earthsbest is a common English word, and in China it means “Earth’s Best”, and has nothing to do with Complainant’s Trademark;
3. Respondent did not register the disputed domain name in bad faith, but simply purchased it from others without notice of Complainant’s rights;
4. Nobody in China is aware of the Trademark, and it has not been registered in China;
5. Respondent intends to build a Wikipedia website that will not have any association with Complainant’s goods, and has started construction of the website, but has been unable to complete construction as the disputed domain name has been locked.
Complainant has established all the elements entitling it to transfer of the domain name.
Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, 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) 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 other words, it is important 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 Panel notes that the Website is entirely in the English language. Furthermore, Respondent has filed the Response in both the Chinese and English languages.
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.
The Panel finds there is sufficient evidence to suggest the likely possibility that the Respondent is conversant in English. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
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.
Decision
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has 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.
The Panel finds that Complainant has rights in the Trademark acquired through use and registration.
The disputed domain name is identical to the Trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trademark and holds that Complainant fulfills the first condition of paragraph 4(a) of the Policy.
There is no evidence that Complainant has authorized, licensed, or permitted Respondent to register or use the domain name or to use the Trademark. Complainant has prior rights in the Trademark which precede Respondent’s registration of the domain name by decades. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
The Panel finds that Respondent has failed to show, for the purposes of the Policy, that he has acquired any legitimate trademark rights in respect of the domain name or that the domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has previously been used in respect of the Website, which, without Complainant’s authorisation, provides sponsored links to websites which promote and offer for sale organic infant nutrition and natural baby care products in direct competition with those promoted and sold by Complainant for many years under the Trademark.
The Panel finds Respondent’s bare assertions that it has begun to construct a Wikipedia website for the disputed domain name, absent any supporting evidence, unconvincing.
Respondent is not commonly known by the domain name, nor is Respondent making a legitimate non-commercial or fair use of the domain name.
By using the disputed domain name in the manner described above, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website or of a product or service on Respondent’s Website.
Respondent contends he or she purchased the disputed domain name without knowledge of Complainant. The disputed domain name was registered on July 15, 2016. According to the WhoIS search for the disputed domain name, the registration was updated on October 20, 2016. Absent any evidence to support Respondent’s bare assertion, and given the recent registration of the disputed domain name, the Panel finds Respondent’s assertion that it purchased the disputed domain name without knowledge of Complainant or of its rights in the Trademark unconvincing.
Given the prior use of the disputed domain name in respect of the Website, with sponsored links to websites offering for sale products in competition with those sold for many years worldwide by Complainant under the Trademark, the Panel concludes it is far more likely that Respondent knew of Complainant and of its rights in the Trademark at the time of registration by Respondent of the disputed domain name.
Whilst the Trademark has not been registered in Mainland China, it has been registered and used elsewhere in the Chinese speaking world (including in Hong Kong, Macau and Taiwan) for many years. It is also not a requirement under the UDRP for complainants to demonstrate ownership of relevant trademark rights in the jurisdictions in which respondents are based. The Panel is also mindful of the distinct possibility that consumers within China will have been exposed to the Trademark and to Complainant’s products via the Internet.
In all the circumstances, including the fact the disputed domain name is identical to the Trademark, and the fact that at some stage recently the Website has been taken down, the Panel concludes that Respondent must have known of Complainant and of its rights in the Trademark at the time it registered (or purchased) the disputed domain name.
For the foregoing reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <earthsbest.store> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: January 4, 2017
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