{ "case_number": "CAC-UDRP-102641", "time_of_filling": "2020-06-05 09:01:11", "domain_names": [ "burkert-cn.com", "burkert-sh.com" ], "case_administrator": " Iveta Špiclová (Czech Arbitration Court) (Case admin)", "complainant": [ "Bürkert Werke GmbH & Co. KG" ], "complainant_representative": "Convey srl", "respondent": [ "Hou Xiao Yi" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is Bürkert Werke GmbH & Co. KG., a German limited partnership company, 100% family-owned, and active in the sector of industrial measurement and control technology of fluid and gas. \r\n\r\nSupplying with its products a wide range of industries (as automotive, biotechnology, chemical industry, electronics, energy, genetic engineering, semiconductor industry, cosmetic, food & beverage and pharma industry, engineering, medical, sanitary engineering, textile industry, packaging and water treatment industry) in 2017 its product sales amounted to 489.9 million euros with an export rate of about 70% with 36 branch offices and over 2.500 employees worldwide. \r\n\r\nThe Complainant was founded in Germany in 1946 by Christian Bürkert, who began by developing and manufacturing innovative products such as foot warmers, oven controls and thermal control systems for incubators. While these products met the needs of the time, over the years the company increasingly focused on valve technology and soon became an international benchmark for industrial solenoid valves.\r\n\r\nThe process organization is based on research & development, production, engineering & consulting, delivery, commissioning, training, after-sales service. The Complainant has 36 branch offices worldwide including 10 in China, where the Respondent is based.\r\n\r\nIn order to protect and promote its trademark BURKERT on the Internet, the Complainant registered various domain names consisting of or comprising the word “BURKERT” as set out in the Identification of Rights section.\r\n\r\nThe Complainant's official websites and , generate a significant number of visits by Internet users. The Complainant is also active on the main Social Media, like Facebook, Instagram, Twitter, Youtube and Linkedin.\r\n\r\nAs soon as the Complainant became aware of the Respondent’s registrations and use of the disputed domain names confusingly similar to its registered trademark BURKERT, it instructed its representative to address to the owner of the domain name a cease and desist letter in order to notify it of the infringement of the Complainant’s trademark rights, requesting the immediate cease of any use of the disputed domain names and the transfer of the same to the Complainant. \r\n\r\nThe domain name was redirected to a website promoting and offering for sale products of the Complainant and of Complainant’s competitors and indicating also the website . The domain name , now redirected to , offered for sale the Complainant’s products passing off as the Complainant’s website.\r\n\r\nA cease and desist letter was sent on February 05, 2020, by email to the domain name burkert-cn.com registrant’s known email address indicated in the website. A reminder was sent on May 6, 2020, when the Complainant became aware of the registration and use of the domain name . \r\n\r\nThe Respondent did not reply but he deactivated the website of the disputed domain name and redirected the disputed domain name to . \r\n \r\n\r\n\r\n\r\n\r\n ", "other_legal_proceedings": "The Panel is not aware of any other proceedings, pending or decided, which relate to the disputed domain names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\nThe Complainant's contentions are set out fully in its Amended Complaint.", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy). ", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy). ", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy). ", "procedural_factors": "1. Administrative Deficiencies\r\n\r\nBy notification dated June 8, 2020 and in accordance with Paragraph 4(d) of the Rules, the CAC notified the Complainant that it was administratively deficient in that it had not sufficiently identified the Respondent. \r\n\r\nThe CAC directed the Complainant to have regard to the Registrar’s verification available in the online case file in the form of a Nonstandard Communication regarding the appropriate identification of the domain name holder.\r\n\r\nThe CAC requested the Complainant correct the administrative deficiency and submit an Amended Complainant. \r\n\r\nOn June 9, 2020 the Complainant filed an Amended Complaint and on June 10, 2020 the CAC determined that the Complaint could proceed by way of Administrative Proceeding.\r\n\r\nThe Panel considers that the administrative deficiency has now been corrected with the identification of the domain name holder as the proper Respondent.\r\n\r\n\r\n2. Consolidation of the disputed domain names and the named Respondent into a single UDRP proceeding\r\n\r\nThe Complainant has sought that the disputed domain names and the named Respondent are consolidated in a single UDRP proceeding, and relies on paragraphs 3(c) and 10(e) of the Rules.\r\n\r\nUnder paragraph 10(e) of the Rules, the Panel has the power to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Under paragraph3(c), the Complaint may relate to more than one domain name, as in this case, provided that the domain names are registered by the same domain name holder.\r\n\r\nIn support of the Complainant’s request for consolidation, the Complainant contends, in the Panel’s view correctly, that it has to demonstrate that:\r\n\r\n(a)\tthe disputed domain names or the web sites to whom they resolve are subject to common control;\r\n\r\n(b)\tconsolidation would be procedurally efficient, fair, and equitable to all parties, having regard to all of the relevant circumstances.\r\n\r\nThe WIPO Case No. D20100281 Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons (‘the Speedo Holdings case’) was cited by the Complainant in support of its contention.\r\n\r\nThe panel in the Speedo Holdings case helpfully collated a number of panel decisions that considered the question of consolidation of multiple domain names and respondents under the Policy and Rules, which the Panel considers and accepts as correctly stating the body of principles that could be applied on this issue.\r\n\r\nAlthough the Policy and Rules appear to be silent about their application to multiple respondents, it seems generally accepted by various panel decisions including that of the panel in the Speedo Holdings case that both paragraphs 3(c) and 10 (e) of the Rules give effect to the presumed common goal of furthering the fundamental objectives of the Policy.\r\n\r\nThe Panel accepts that multiple domain names registrants controlled or owned by a single person or entity may be treated as a single respondent for the purpose of the Policy and Rules. See generally Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d\/b\/a\/ Creative Genius Domain Name Sales, supra. Common control has been found where the respondents were related businesses. Asset Marketing Systems, LLC v. SmartBuy Corporation, Chan Organization, Mitchell de la Cruz, Gongju Jung et. al., WIPO Case No. D2004-0492.\r\n\r\nThe principles to be applied in determining whether there was common control or ownership can be summarised as follows (as set out by the Complainant):\r\n\r\n(a) Circumstances indicating that different registrants were alter egos of the same beneficial holder. See Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654. \r\n\r\n\r\nFactors relevant to be taken into account would include:\r\n \r\n(i) whether respondents had common administrative contact or technical contact, or other instances of commonality in the registration information, such as the same postal address or e-mail address. See ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034; Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd., WIPO Case No. D2002-0066; Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.\r\n\r\n(ii) circumstances indicating that a single person or entity had registered multiple domain names using fictitious names. See Guccio Gucci S.p.A. v. Huangwensheng, Shirley, wangliang, xiaomeng xiexun, jiangxiuchun, WIPO Case No. D2012-0342; Yahoo!, Inc v. Somsak Sooksripanich and Others, WIPO Case No. D2000-1461; Yahoo! Inc. v. Yahoosexy.com, Yahoo-sexy.com, Yahoosexy.net, Yahousexy.com and Benjamin Benhamou, WIPO Case No. D2001-1188; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834.\r\n\r\n(iii) Substantial commonalities in the web sites to whom the disputed domain names resolved and the use of the same domain name servers. See Nintendo of America Inc. v. Administrator Lunarpages, Alan Smith, Neoconsoles Inc., Liu Hai, Linda Wong, and Wong, supra, Apple Inc. v. Fred Bergstrom, LottaCarlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388, Sharman License Holdings, Limited v. Dustin Dorrance\/Dave Shullick\/Euclid Investments, WIPO Case No. D2004-0659; and Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541.\r\n\r\n(iv) The incorporation of the complainants’ trademark in its entirety together with a descriptive or geographical term. See Ecco Sko A\/S v. tian yu, Karei, Wuxiaoman, xiao tian, WIPO Case No. D2011-1606.\r\n\r\nHaving reviewed the Complainant’s evidence in support of their contention of consolidation, and applying the principles stated above, the Panel is satisfied of the following relevant circumstances of similarities:\r\n\r\n- They share the same date of hour of registration, namely August 17, 2015;\r\n- They share the same registrar, namely Alibaba Cloud Computing (Beijing) Co. Ltd;\r\n- They share the same extension .com;\r\n- The Registrant State\/Province are the same, namely described as ‘Shang Hai’ which is presumed to refer to Shanghai in the People’s Republic of China;\r\n- The Name Servers are similar: DNS10.HICHINA.COM\/DNS9.HICHINA.COM; and\r\n- The same mobile number 18221776247 was indicated on both websites and , being the disputed domain names.\r\n\r\n\r\n3. Notification of proceedings to the Respondent\r\n\r\nWhen forwarding a Complaint, including any annexes, electronically to the Respondent, paragraph 2 of the Rules states that CAC shall employ reasonably available means calculated to achieved actual notice to the Respondents. \r\n\r\nParagraphs 2(a)(i) to (iii) set out the sort of measures to be employed to discharge CAC’s responsibility to achieve actual notice to the Respondent.\r\n\r\nOn July 1, 2020 the CAC by its Nonstandard Communication stated as follows (omitting irrelevant parts):\r\n\r\n‘Dear Parties\r\n\r\nPlease be aware that neither the written notice of the Complaint nor the advice of delivery thereof was returned to the Czech Arbitration Court. The CAC is therefore unaware whether the written notice was received by the Respondent or not.\r\n\r\nAs far as the e-mail notice is concerned, we received a confirmation that the e-mail sent to 337838056@qq.com was successfully relayed (please find the confirmation enclosed). The e-mail notice sent to postmaster@burkert-cn.com and to postmaster@burkert-sh.com were returned back undelivered as the e-mail addresses had permanent fatal errors.\r\n\r\nNo further e-mail addresses could be found on the disputed sites.\r\n\r\nThe Respondent never accessed the online platform.\r\n\r\nKind regards,\r\n\r\nIveta Špiclová\r\nCase Administrator\r\nCAC’\r\n\r\nGiven the reasonable measures employed by CAC as set out in the above Nonstandard Communication, the Panel is satisfied that CAC has discharged this responsibility.\r\n\r\n\r\n4. Language of the proceedings request\r\n\r\nParagraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. \r\n\r\nAccording to the Registrar Verification the Registration Agreement is in Chinese but the Registrar has also a registration agreement in English.\r\n\r\nThe Complainant requests that the English language should be the language of the proceeding, and contends that the Respondent has familiarity with English in light of the following circumstances:\r\n\r\n(i) some parts of the website corresponding to the disputed domain name , now redirected to , are in English. The descriptions of the products and the datasheets of the products are partially in English and therefore the website http:\/\/www.burkretsh.cn is dedicated to English speaker internet users;\r\n\r\n(ii) the Respondent’s company name indicated on the website of the disputed domain name was translated in English for the English speaker internet users;\r\n\r\n(iii) the disputed domain names contain Latin characters and the English abbreviation “cn” for China and “sh” for Shangai;\r\n\r\n(iv) following the English cease and desist letters sent by the Complainant to the Respondent, the Respondent deactivated the disputed domain name website corresponding to the domain name and redirected the domain name to ;\r\n\r\n(v) the Respondent, active in the sector of import and export of industrial automation products and control components, could not ignore English that actually is the primary language for international relations and business; and\r\n\r\n(vi) the translation of the Complaint into the Chinese language would cause additional expense and delay, making unfair to proceed in the Chinese language.\r\n\r\n\r\nThere is no demurrer to this contention by the Respondent. \r\n\r\nThe Panel accepts the Complainant's contentions and will proceed to determine the proceeding in the English language.\r\n\r\nThe Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision and accordingly, this matter can proceed to be considered by the Panel in accordance with the Policy and the Rules.\r\n", "decision": "Accepted", "panelists": [ "Adjunct Prof William Lye, OAM QC" ], "date_of_panel_decision": "2020-07-10 00:00:00", "informal_english_translation": "The Complainant is the owner of the trademark BURKERT, with several international and national trademark registrations worldwide, including the following:\r\n\r\n- INT. Trademark BÜRKERT no. 933922 – Nice Classification: 6, 7, 9, 20, designating also China;\r\n- German Trademark BÜRKERT no. 302014003452 – Nice Classification: 6, 7, 9;\r\n- U.S. Trademark BÜRKERT no. 3407829 – Nice Classification: 6, 7, 9, 20;\r\n- INT. Trademark BÜRKERT TwinPower no. 1080319 – Nice Classification: 7, 9, designating also China);\r\n- EU Trademark BÜRKERT no. 000380089 – Nice Classification: 6, 7, 9, 20;\r\n- EU Trademark BÜRKERT no. 009056003 – Nice Classification: 37, 4; and\r\n- EU Trademark BÜRKERT no. 017912399 – Nice Classification: 11.\r\n\r\nThe Complainant also owns domain names consisting of the word ‘BURKERT’ under several different TLDs, including, inter alia, , , , , , , .\r\n", "decision_domains": { "BURKERT-CN.COM": "TRANSFERRED", "BURKERT-SH.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }