Huntsman International, LLC / Clariant AG v. Chen DongBing / 陈冬冰
Claim Number: FA1706001734814
Complainant is Huntsman International, LLC / Clariant AG (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Chen DongBing / 陈冬冰 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <huntsmanclariant.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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.
David L. Kreider, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 6, 2017; the Forum received payment on June 6, 2017.
On June 13, 2017, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <huntsmanclariant.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development 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 June 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2017 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 email@example.com. Also on June 13, 2017, the 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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. The domain name at issue is identical or confusingly similar to Complainants’ trademarks. Specifically, the disputed domain name is identical to Complainants’ widely-reported Merger Name. Moreover, the domain name consists of the HUNTSMAN trademark (a famous mark strongly associated with Huntsman) and the CLARIANT trademark (a famous mark strongly associated with Clariant), and merely adds a generic top level domain (“.com”). Prior panels have concluded that the addition of the name of a newly-acquired or merged company and a gTLD to a complainant’s mark is not sufficient to diminish the similarities between the marks.
There is no question as to priority. Huntsman and its predecessors in interest have used the HUNTSMAN Marks since at least as early as 1970, decades before Respondent registered the disputed domain name in 2017. Clariant has used the CLARIANT Marks since at least as early as 1995, again decades before Respondent registered the disputed domain name. Complainants had also obtained multiple registrations worldwide for its HUNTSMAN Marks and CLARIANT Marks prior to Respondent’s registration of the disputed domain name.
b. Respondent has no rights or legitimate interests in the domain name at issue.
i. Respondent has not used, nor made any 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. The disputed domain name does not resolve to an active website.
ii. Respondent is not commonly known by the domain name at issue. In addition, Huntsman has not licensed or otherwise permitted Respondent to use its HUNTSMAN Marks or any other mark owned by Huntsman, Clariant has not licensed or otherwise permitted Respondent to use its CLARIANT Marks or any other mark owned by Clariant, and Complainants have not authorized Respondent to use the Merger Name.
iii. Respondent is not making a legitimate noncommercial or fair use of the domain name.
c. Respondent registered and is using the domain name in bad faith.
i. The disputed domain name was registered by Respondent on May 22, 2017, which is the same date that Complainants publicly announced the merger and the Merger Name. The fact that the domain name is identical to the highly unique Merger Name and was registered on the same date that Complainants announced the merger of Huntsman and Clariant is very strong evidence that the Respondent opportunistically registered the domain name in bad faith. Numerous prior panels have found that a respondent’s opportunistic registration of a domain name comprised of two marks concurrently with the announcement of a merger or acquisition constitutes bad faith registration and use.
ii. The fact that the domain name incorporates Huntsman’s highly unique and famous HUNTSMAN mark and Clariant’s highly unique and famous CLARIANT mark strongly suggests that Respondent had actual knowledge of Complainants and their respective rights in the HUNTSMAN Marks and the CLARIANT Marks at the time Respondent registered the domain name, and at the very least Respondent had constructive notice of Complainants’ rights in the HUNTSMAN Marks and the CLARIANT Marks as a result of Complainants’ respective ownership of numerous trademark registrations for the HUNTSMAN Marks and the CLARIANT Marks. Prior panels have found that a respondent’s actual or constructive knowledge of the complainant’s rights is evidence of bad faith.
iii. Respondent’s bad faith is evidenced by the fact that it owns no trademark or other intellectual property rights in the domain name, the domain name does not consist of the legal name of or a name commonly used to identify Respondent, Respondent has not used the domain name in connection with the bona fide offering of any goods or services, Respondent has made no bona fide noncommercial or fair use of Complainants’ marks in a site accessible under the domain name, and Respondent’s domain name is identical or confusingly similar to the Merger Name, the highly distinctive and famous HUNTSMAN Marks, and the highly distinctive and famous CLARIANT Marks. See 15 U.S.C. §1125(d)(1)(B)(i).
Respondent failed to submit a Response in this proceeding.
Complainant argues in the following terms that this Panel should exercise its discretion to allow the use of English in these proceedings:
“Although the Registration Agreement for the subject domain name is in Chinese, Complainants request pursuant to UDRP Rule 11(a) that the proceeding advance in English. Complainants note that there is evidence that the Respondent is familiar with English. The disputed domain name incorporates the English-language term “huntsman.” In addition, the English-language term “huntsman” is a trademark owned by Complainant Huntsman International, LLC, which resides in the United States. The TLD of the disputed domain name is rendered in ASCII characters, and not Chinese characters. Finally, the WhoIs information for the disputed domain name shows that the Respondent registered the disputed domain name using the email address “firstname.lastname@example.org,” and “admin” is an English-language term that is a shortened form of the English-language term “administrator.”
In addition to Respondent’s likely proficiency in English as shown by the evidence described above, Complaints submit that Panel should exercise its authority under UDRP Rule 11 and permit the proceeding to advance in English because of the added burden and expense that translating the proceedings into Chinese would impart upon Complainant, as well as the added time and inefficiency that undertaking these proceedings in Chinese would add to the process. Complainant Huntsman International, LLC is a U.S.-based company and Complainant Clariant AG is a Switzerland-based company, and both Complainants conduct business activities in English or languages other than Chinese. Complainants are not familiar with the Chinese language and do not speak or write in Chinese. Requiring that these proceedings be undertaken in Chinese would impart substantial burden and additional costs upon Complainants and substantially slow the process, which is antithetical to the stipulations of ICANN Rules 10(b) and 10(c).
Numerous previous panels have decided that proceedings may advance in a language other than that of the registration agreement where there is evidence that the respondent is familiar with the requested language and that requiring the proceedings to be undertaken in the language of the registration agreement would unduly burden the complainant.”
The Panel’s Analysis and Decision
This Panel speaks fluently and reads Chinese as a second language. The Panel notes that paragraph 6 of the 12 paragraph Chinese-language Written Notice of Complaint delivered to Respondent on June 13, 2017, clearly and unambiguously informed Respondent of the 20-day deadline for submitting a written response. The notice advised Respondent in the Chinese language that the Forum must receive Respondent’s response not later than July 3, 2017.
On June 15, 2017, Respondent replied to the Forum in a brief Chinese-language email saying that Respondent was unable to read English and that Respondent had registered the disputed domain name in Chinese and that the registration agreement was written in Chinese. Respondent requested that Complainant be directed to submit Chinese-language translations of the Complaint and all exhibits.
Thereafter, on June 17, 2017, Respondent sent a further Chinese-language email to the Forum, asking that Annexure 1 to the earlier email be re-sent, as Respondent was unable to view the attachment. Respondent referred to its earlier email of June 15, 2017, reiterating its request that Complainant be required to submit the Complaint and all annexures in Chinese.
On June 21, 2017, Respondent sent two brief Chinese-language emails to the Forum. Respondent’s first email thanked the Forum for its various email replies and clarifications, all of which were written in English, and sought an extension of time of an unspecified duration to submit a response. Respondent gave no reason as to why an extension of time was needed. Respondent’s second email requested that a Chinese-language pre-printed form of Response be supplied to Respondent, if available.
Having considered all the circumstances, the Panel finds compelling Complainant’s arguments that these proceedings ought be conducted in English.
Respondent’s opportunistic registration of an English-language domain name comprising the corporate names and registered trademarks of an American and a Swiss company on the very day of a public announcement that the companies had concluded a business merger, suggests that Respondent is familiar with the English language. Moreover, it appears from Respondent’s email correspondence that Respondent was able to read and apprehend the English language emails it received from the Forum. See, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).
Complainant asserts that it would be unfairly burdened should Complainant be required to translate the Complaint and all exhibits into Chinese. Against this burden to Complainant must be weighed any unfairness to Respondent. It is noted, however, that Respondent did not submit a Response in this cause, and has elected not to appear and participate in these administrative proceedings, despite having received written notice of the relevant deadlines and requirements, in Chinese.
The Panel decides that the language of these proceedings will be English.
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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, a global chemical producer, registered its HUNTSMAN mark with the USPTO (e.g. Reg. No. 2,039,875, registered Feb 25, 1997), and has rights in the marks under Policy ¶ 4(a)(i). In addition, Clariant enjoys extensive common-law rights based on many years of use and also owns a number of federal trademark registrations for the CLARIANT Marks, many of which are incontestable. Complainant successfully merged its business with Clariant AG in May 2017, and has rights in the new post-merger name, HUNTSMANCLARIANT. Respondent’s domain name <huntsmanclariant.com> is identical to Complainant’s mark because it fully incorporates the mark and merely appends the generic top-level domain (“gTLD”) ”.com.” See C.V. Starr & Co., Inc. and Starr International Company, Inc. v. Shen Zhong Chao FA 1712431 (Forum Feb. 24, 2017) (“The disputed domain names…correspond to Complainants' registered STARR mark, adding the name of Complainant's new subsidiary and the ".com" top-level domain, and omitting spaces or substituting a hyphen. These changes do not substantially diminish the similarity between the domain names and Complainants' mark for purposes of the Policy”).
Complainant filed intent-to-use applications for the merger name, HUNTSMANCLARIANT, with the USPTO on May 22, 2017, which is the same date the merger was publicly announced and the date that Respondent registered the disputed domain name. See Xojet Inc. v. Texas International Property Associates, FA 1105705 (Forum Dec. 24, 2007) (finding that “UDRP decisions have established that in addition to the means used to promote the mark, intent-to-use applications by a complainant support the finding that the Complainant has rights in the trademark,” and that “Complainants having filed an intent to use trademark application in the U.S. Patent Office, are considered to have fulfilled the requirements of paragraph 4(a)(i) of the Policy.”).
The Panel finds that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name, thus shifting the burden of proof to Respondent to show the contrary. Respondent has failed to do so, and has defaulted and has not participated in these proceedings.
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that Respondent’s registration of the disputed domain name comprising two highly distinctive, registered marks concurrently with the public announcement of a merger between the corporate owners of the marks is conclusive evidence of Respondent’s opportunistic and bad faith registration and use of the disputed domain name. See Thomson Canada Ltd., Thomson Finance S.A. & Reuters Ltd. v Joe Hyon-chol, FA 1107033 (Forum Jan. 17, 2008) (finding bad faith in registration of <thomsonreuters.com> on same day that Reuters announced its acquisition by Thomson); 3M Co. v. B K Jeong, FA 505494 (Forum Aug. 11, 2005) (finding bad faith in registration of <3mcuno.com> on same day that 3M announced its acquisition of Cuno Inc.); Konica Corp., Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC, D2003-0112 (WIPO Mar. 31, 2003) (finding bad faith in registration of <konicaminolta.net> on same day that Konica and Minolta announced their merger).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <huntsmanclariant.com> domain name be TRANSFERRED to Complainant.
David L. Kreider, Panelist
Dated: July 13, 2017
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