Beiersdorf AG, which is located in Hamburg, Germany has just been found guilty of Reverse Domain Name Hijacking (RDNH) on the domain name BeiersdorfChina.com
They were represented by in-house counsel
In this case the Respondent is Beiersdorf (Tianjin) Petrochemical Co., Ltd., which is located in Tianjin, China.
The decision was issued in Chinese and I used Google translate to turn it into broken English
“”The complainant is a company registered in Germany, mainly engaged in the production and sale of various types of skin care products.
BEIERSDORF Complainant has registered trademarks in the world, more than 170 countries and regions.
Respondent is a company registered in China, mainly engaged in the production and sale of various petrochemical products in the field, such as engine fuel chemical additives, engine anti-knock agents, antifreeze, hydraulic fluid systems, fuel savings, refrigerants, power steering fluid, transmission fluid, engine coolant with anti-boil preparations, engine coolants
The disputed domain name registered in July 20, 2013.
Respondent argued that the Respondent registered and used the disputed domain name when you are not malicious. Comparison of the disputed domain name to the site and the official website of the complainant can be seen, the two unrelated. Both the overall style, showing various aspects of unrelated information, display products. The disputed domain name to the site to introduce the Respondent News and its products, and on the home page prominently highlighted by the complainant trademark and business name, there is no information to display its skincare brand with the complainant and the complainant have any relevance.
Secondly, the trademark case on the site from the disputed domain name to point to display the Respondent actually used in the show view, nor any of the complainant’s Nivea skin care brands such as medicine meant trying to cause confusion. The complainant applied for a trademark and actually used lubricating oils, automotive oils and other areas of its operations, with daily skincare unrelated, aspects of its functional use, sales channels, etc. are quite different and will not cause consumer confusion and this difference has been identified as Chinese trademark Office, and has been approved by the Respondent registered the trademark on the 1st, 4th class designated goods.
Dispute in this case where the conflict is not just a global trademark and domain name regionality, more important question is the trademark coexistence of different categories of goods, while pointing to the same or similar domain names. Although the complainant BEIERSDORF trademark enjoys a registered trademark in the first 3,5,6,10,16,20,21 drugs, skin care products and other commodities, while the Respondent BEIERSDORF trademark of Beiersdorf in the first class 1,4 application for registration of goods on lubricants, automotive oil, also has been convicted of China trademark Office to be approved for registration.
Respondent failed to submit any evidence to prove their mark on the first 1,4 BEIERSDORF class lubricants, automotive oil and other commodities in China have any registered trademarks or known to the public, but the company was the complainant submitted a business license, trademark information pages opposition trademark Office ruling, show pictures, disputed trademark registration and other information sufficient to prove that the Respondent for Beiersdorf BEIERSDORF trademarks, business names, domain names and other lawful rights in China.
And there is no evidence that the presence of the Respondent knowingly and intentionally caused the presence of the complainant and the complainant confuse malicious.
Multiple UDRP panel had previously repeatedly stressed the scope of UDRP administrative procedures protection is limited to domain squatting under the policy, for the more complex issues such as trademark ownership dispute by the appropriate court having jurisdiction in UDRP decisions by judicial channels.
The complainant in this case knowing that the Respondent after China’s trademark objection fails, turn to try to commit a large number of German UDRP Expedited Arbitration way through to the center by the English evidence compel Respondent made the respondent within 20 days, and deliberately concealed it knows the Respondent has registered the trademark in China approved by the facts. In view of this, the Respondent urge ex officio expert group finds that the complaint in this case the complainant’s behavior is based on malice, constitute reverse domain name hijacking.
China’s Trademark Law no similar well-known trademarks on common law. In China, the well-known trademark main administrative identified (mainly be dealing with trademark disputes by the Trademark Office and Trademark Review and Adjudication Board or management activities during the trademark) and judicial determination (people’s courts at all levels have a trademark case by case basis for jurisdiction the fact that, when necessary, whether well-known trademarks involved to make sure the facts) in two forms.
However, the complainant did not inform a complainant centers and expert dissent No. 9,268,370 and No. 9,268,394 BEIERSDORF trademark of Beiersdorf was not successful;. And b China Trademark Bureau has ruled No. 9,268,370 and No. 9,268,394 Beiersdorf BEIERSDORF registered trademark approval.
Panel finds that the Complainant has the responsibility to inform the center and expert foregoing facts.
The Group believes that when the complainant made a complaint should know China Trademark Bureau has ruled No. 9,268,370 and No. 9,268,394 Beiersdorf BEIERSDORF registered trademark approval.
The Group believes that the complainant has the responsibility to make the Respondent’s evidence trademark in China.
In addition, the Group believes that the complainant has the responsibility to present evidence and submissions of the above trademark opposition, including information about any trademark sense of evidence or explanation.
In view of this, in accordance with the provisions of Rule 15 (e) of, the Panel finds that the complaint the complainant’s bad faith conduct, has constituted a reverse domain name hijacking.””
