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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Yageo Corporation v OneWorld
Claim Number: FA0009000095702
PARTIES
The Complainant is Charlin Chen Yageo Corporation , Hsin Tein, Tiapei , II, R.O.C. ("Complainant") represented by Evan Finkel, Pillsbury Madison & Sutro LLP. The Respondent is Roy Fang Oneworld, Taipei, Taiwan, R.O.C. ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are YAGEO.COM, YAGEO.NET, YAGEO.ORG, registered with Network Solutions.
PANELIST
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 the panelist in this proceeding.
R. Glen Ayers has been selected as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 28, 2000; The Forum received a hard copy of the Complaint on October 3, 2000.
On October 2, 2000, Network Solutions confirmed by e-mail to The Forum that the domain names YAGEO.COM, YAGEO.NET, YAGEO.ORG are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On October 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 29, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@YAGEO.COM, YAGEO.NET, YAGEO.ORG by e-mail.
On November 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed R. Glen Ayers, as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complaints asserts that registration of the three domain names set forth above violate the ICANN policies in that the domain names are identical to its trademark YAGEO. Complainant first used the mark in 1977. The mark has been registered in the United States since 1989 and the mark is registered in a number of other countries including Twain, Republic of China, France, Great Brittan, Germany, Spain, the European Community, Hong Kong, China, Peoples Republic of China, and Singapore. YAGEO is a very well known manufacturer in Taiwan producing what it refers to as passive components, including resisters, capacitators, and inductors. YAGEO states that it commenced its Internet activity by registering as a web site www.yageo.com.tw (tw is the country code and the registration focused on users in Taiwan).
When YAGEO subsequently determined to establish an international online identity, it found that www.yageo.com had been registered by Respondent. Complainant contacted Respondent, and Complainant alleges that Respondent, through its principal, Roy Fang, stated that "he had waited for YAGEO for a long time." Complainant alleges that Mr. Fang stated that he had registered yageo.com in order to create an opportunity to discuss an investment proposal which would allow Complainant to invest 5 million dollars.
YAGEO goes on to assert, and offer documentary evidence, that the parties entered into an agreement under the terms of which yageo.com would be transferred to Complainant for the cost associated with registration. The registration cost would be paid over to Mr. Fang and Respondent. Thereafter, Complainant declined to engage in the "investment opportunity", Mr. Fang refused to transfer the domain name, and Mr. Fang or some other person associated with the Respondent then registered the other two names, yageo.net and yageo.org.
Complainant also asserts that it has not licensed the name or otherwise authorized the use of the name YAGEO. It asserts that Mr. Fang and Respondent have no authority to use the domain name.
Complainant also asserts that the Respondent has made no use of the domain name for any purpose.
Complainant finally asserts that Mr. Fang and Respondent registered the domain name in bad faith in order to extort concessions concerning a proposed new investment opportunity.
Subsequent to the filing of the Respondent’s submissions, the Complainant filed its "Reply to Respondent’s Response". The Reply was timely received but the payment required was late. Therefore, the submission is not in compliance with Supplemental Rule No. 7, and the "Reply to Respondent’s Response" will not be considered because of the untimely receipt of the required fee.
B. Respondent
Respondent avoids a direct response to the allegations of Complainant and asserts that it had a legitimate reason to register yageo.com. Respondent desired: "To re-create the combined WEB success of YAhoo.com + GEOcities.com + COMe.to on the WAP front".
Respondent characterized the transfer agreement as (1) an agreement that its recognized rights in the domain name and (2) as an agreement under the terms which Respondent would continue to own the domain name with a referral to the Complainant’s web site.
Respondent also asserts that the Complainant contacted it first, and denies that the "had waited for YAGEO for a long time" statement had any reference to the Respondent’s registration of the web site.
In general, Respondent denies any wrong doing or bad faith.
FINDINGS
It is apparent on the written record, and as set forth below, that Respondent’s registration of the three domain names violates the ICANN policies. First, it is very clear that YAGEO is a protected trademark, it is also very clear that, in Taiwan , and in the particular industry, that this is what is known as a "famous" mark, which has acquired a significant secondary meaning. As Complainant points out, YAGEO is, within its industry, a very famous name.
Further, Complainant’s version of the events is more believable than Respondent’s version. Complainant has alleged, and has demonstrated to the satisfaction of the Panelist, that the registration of the domain name by Respondent was a ploy. Respondent at all times intended to essentially hold the domain name hostage to negotiations concerning a $5 million dollar investment in a new venture which Respondent was promoting. This is an odd circumstance, in that Respondent appears to have had no intent to register the domain name for purposes of either misdirecting traffic or stealing customers or reselling the domain name to the trademark owner at a profit. In fact, apparently the domain names have never been put to any use by Respondent, and Respondent has no business venture that is in any way related to the domain name, despite Respondent’s "business plan" described in its response.
Rather, Respondent appears to have used the domain name as bait to attract very large fish into the net of a proposed investment opportunity. Apparently, Respondent truly believed in the validity of the investment opportunity, which is not discussed in the pleadings, or at least is not clear from the pleadings. Still, use of an improperly registered domain name for this purpose is, improper, and bad faith can be inferred from these facts and circumstances.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant holds a United States trademark registration for YAGEO as a trademark in connection with resistors. YAGEO (or the "Mark") is also registered in Taiwan; Republic of China; France; Great Britain; Germany; Spain; Italy; Hong Kong; China, and Singapore. Complainant has been using the mark in commerce since 1977.
The domain names registered by Respondent are obviously identical to the Mark, YAGEO, and the of ".com", "net", and "org", is not a distinguishing difference.
See, e.g., Sulzer Vasutek Ltd. v. Adam Power/Mantis Surgical Ltd., AF 271 (eResolution September 28, 2000) (finding that the domain names <vasutek.com>, <vasutek.net>, and <vasutek.org> are identical to the Complainant’s trademark VASUTEK); Blue Sky Software Corp. v. Digital Sierra Inc. WIPO Case No. D2000-0165 (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Rights or Legitimate Interests
Respondent is not a licensee of Complainant. Respondent does not appear to be using any of the three domain names in connection with a bona fide offering of goods or services. Respondent does not appear to be known by any of the domain names at issue. Respondent’s use of the domain name, attempting to use it as an investment bargaining tool, is obviously commercial use; this use is not "noncommercial" or "fair use".
See, e.g., CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has not demonstrated any rights or legitimate interests in the domain name "TWILIGHT-ZONE.NET" since Complainant had been using the mark TWILIGHT ZONE since 1959); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1)Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Respondent’s assertion that, before notice of the dispute, it registered yageo.com to promote a new business venture which would "re-create the web success of YAhoo.com + GEOcities.com + COMe.to me on the WAP front..." is not persuasive.
Registration and Use in Bad Faith
Respondent appears to have registered the domain names with the intent to transfer the domain names in exchange for $5,000,000 in investment money from Complainant on an unrelated project. This is evidenced by two facts.
First, Complainant’s evidence indicates that Respondent registered the domain name yageo.com "in order to create an opportunity to discuss with Complainant an investment proposal, which would require Complainant to invest $5,000,000.
See, e.g., Metallica v. Schnieder, FA 95636 (finding bad faith based on Policy ¶ 4.b.(i) where the Respondent offered to transfer the domain name if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview, implying a willingness to transfer the domain name in return for non-monetary consideration).
Second, after the parties had executed a domain name transfer agreement and after negotiations broke down regarding the investment proposal, Respondent registered the additional domain names yageo.net and yageo.org, possibly to be used as additional leverage with which to negotiate with Complainant.
See, e.g., CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) ("There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent."); Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith."); America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith).
While Respondent asserts that it does not intend to use the domain name to create confusion with Complainant’s mark because Respondent will only use the domain name in association with the top-level domain ‘.com’, this is no defense. Respondent also asserts that the fact that Complainant initiated contact with Respondent, but Respondent’s conduct thereafter is sufficient to justify a finding of bad faith.
DECISION
The three domain names shall be transferred to Complainant.
R. Glen Ayers, Panelist
Dated: November 13, 2000
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