Silverson Machines Limited v. cui li xia
Claim Number: FA2308002055822
Complainant is Silverson Machines Limited (“Complainant”), United Kingdom, represented by Justine Flockhart of Hansel Henson Limited, United Kingdom. Respondent is cui li xia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <silversonmixer.com> (the “disputed domain name”), registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on August 2, 2023; Forum received payment on August 2, 2023.
On August 3, 2023, the Registrar confirmed by e-mail to Forum that the <silversonmixer.com> disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 August 10, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of August 30, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@silversonmixer.com. Also on August 10, 2023, the Chinese and English Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
Prior to discussing the three elements of the Policy, the Panel must decide the language of the proceedings. The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese in accordance with UDRP Rule 11(a). However, pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, giving regard to the circumstances of the case.
In Adidas AG v. Daehyeon Kim, WIPO CASE No. D2013-1904, the principle was established that “[t]he spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Here it was found that although the registration agreement was in Korean, the administrative proceeding would be conducted in English because, inter alia, (1) the disputed domain contained English words; (2) respondent registered the disputed domain name in connection with the “.com” generic Top-Level Domain, which primarily targets English speaking Internet users; and (3) the complainant was unable to communicate efficiently in Korean.
The Panel agrees with Complainant that the proceeding should be conducted in English because Respondent is conversant and proficient in English, the disputed domain name is written in English letters, not Chinese characters, and the disputed domain name resolves to a website written exclusively in English, the subject matter of the website includes highly technical and scientific information in English, suggesting that Respondent would not be prejudiced should English be the language of the proceeding. Moreover, the Panel concludes that the language requirement has been satisfied through the Commencement Notification that was sent to Respondent in Chinese and English, and Respondent did not submit a Response, nor did Respondent submit a request to receive the Complaint and annexes in Chinese. Moreover, neither the Complainant nor its authorized representative have knowledge of the Chinese language and thus, Complainant would be prejudiced by a Chinese-language proceeding because the translation costs are burdensome and unnecessary, whereas for the reasons set out above, proceeding in English will not prejudice the Respondent.
Therefore, based on the foregoing, the Panel concludes that the remainder of the proceeding should be conducted in English.
A. Complainant
Complainant was incorporated in 1946 and for more than 70 years it, and its group of companies, has manufactured and sold high quality industrial mixers for processing and manufacturing industries worldwide under the trademark SILVERSON. Complainant has served customers in over 150 countries, including in industries as diverse as food, pharmaceuticals, cosmetics, and petrochemicals.
Complainant is the owner of numerous registered trademarks in the Unted Kingdom, the United States and many other jurisdictions worldwide (e.g., SILVERSON, United Kingdom, UK Registration No. 676240, registered on January 19, 1949, in international class 7; and SILVERSON, United States Registration No. 2384814, registered on September 12, 2000, in international class 7 (hereinafter collectively referred to as the “SILVERSON Mark”)
Complainant also has registered domain names incorporating the SILVERSON Mark, namely, <silverson.com>, registered since April 30, 1996, and <silverson.co.uk>, registered since February 14, 2000, each of which points to Complainant’s official website that contains information about Complainant’s services and products.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s SILVERSON Mark because it incorporates the Mark in its entirety, adding the descriptive term “mixer”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. The addition of a descriptive term and a gTLD typically fails to sufficiently distinguish a disputed domain name from a mark per Policy paragraph 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Complainant also claims that Respondent has no legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name, Complainant has not authorized or licensed Respondent to use the SILVERSON Mark, and Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because the disputed domain name was registered, and is being used, with the intent for commercial gain to misleadingly confuse and divert Complainant’s customers and potential customers through the sale of the products marketed on Respondent’s resolving website, none of which are the Complainant’s products.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith as it is using the disputed domain name to attempt to attract, for commercial gain, Internet users to Respondent’s resolving website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights in the SILVERSON Mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s SILVERSON Mark. Further, the Panel holds that Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
The Panel finds that Complainant has registered trademark rights in the SILVERSON Mark through its registrations with various trademark agencies worldwide (e.g, SILVERSON, United Kingdom, UK Registration No. 676240, registered on January 19, 1949, in international class 7; and SILVERSON, United States Registration No. 2,384,814, registered on September 12, 2000, in international class 7. Registration with multiple trademark agencies or offices is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
The Panel further finds that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s SILVERSON Mark as it wholly incorporates the mark in its entirety and adds the descriptive word “mixer”, followed by the “.com” gTLD. The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SILVERSON Mark as the disputed domain name incorporates the entirety of the SILVERSON Mark, adding the descriptive term “mixer”, followed by the “.com” gTLD. Adding a descriptive term and a gTLD to a complainant’s mark does not distinguish a disputed domain name from a mark under Policy paragraph 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond:
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized, licensed or otherwise permitted Respondent to use the SILVERSON Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant as the disputed domain name redirects to a website that includes copies of certain sections of Complainant’s copyrighted website.
Moreover, Respondent’s attempt to pass itself off as an affiliate of Complainant may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy paragraphs 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use per Policy paragraph 4(c)(iii) where the disputed domain name directed to a website featuring complainant’s mark and information related to complainant’s business).
Finally, Respondent has no legitimate commercial, noncommercial or fair interests in the disputed domain name, which was registered and is being used with the intent for commercial gain and to misleadingly confuse and divert Complainant’s customers and potential customers to Respondent’s resolving website, expecting that such customers would believe that the products for sale are Complainant’s, which they are not.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, Respondent attracts Internet users for commercial gain by using the disputed domain name to pass itself off as Complainant and to disrupt Complainant’s business, indications of bad faith. Passing off as Complainant for commercial gain demonstrates bad faith under Policy paragraph 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy paragraph 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy paragraphs 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Here, Respondent is engaging in the impersonation of Complainant by competing with Complainant’s services offered on its website and using Complainant’s SILVERSON Mark on Respondent’s website, with the only conceivable explanation being to engage in bad faith conduct and deceive users.
Second, the Panel finds that Respondent registered the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the SILVERSON Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014); See also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and [. . . ] pass[ed] itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (Respondent used the domain name at issue to resolve to a website at which Complainant’s trademarks were prominently displayed). Here, Respondent displayed Complainant’s SILVERSON Mark on Respondent’s resolving website with full knowledge of Complainant’s business and trademarks. In addition, Respondent’s resolving website displays verbatim sections of Complainant’s website. By way of example, Respondent copied word-for word the wording from the “About Us” section of Complainant’s website without permission. This alone is sufficient to show Respondent’s bad faith registration and use of the disputed domain name. See Opportunity Financial, LLC v. Dylan Smith, FA 2207002006507 (Forum August 25, 2022) (“Respondent’s use of Complainant’s trademark without authorization demonstrates bad faith). Thus, the Panel finds that in this proceeding, Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <silversonmixer.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 6, 2023
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