Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Walsin Technology Corporation, USA ("Complainant") represented by Michael K. Bosworth, Oppenheimer Wolff & Donnelly LLP. The Respondent is Walsin Net Technology, Inc., Irvine, CA, USA ("Respondent") represented by Stephen H. Sturgeon, Stephen H. Sturgeon & Associates.

The domain name at issue is walsin.com, registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Judge Karl V. Fink (Ret.) is Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 6, 2000; The Forum received a hard copy of the Complaint on October 10, 2000.

On October 6, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name walsin.com is 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 ICANNís UDRP.

On October 10, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@walsin.com by e-mail.

Respondent filed a timely response. Complainant filed an additional submission pursuant to The Forumís Supplemental Rule #7. Respondent filed an additional submission on November 17, 2000. All submissions by the parties were considered by the Panel.

On November 7, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant is the owner of the registered U.S. Trademark No. 2,305,198 for WALSIN.

A consumer desiring to contact Complainant, a publicly traded corporation and well known manufacturer of electronic components will mistakenly believe the website, "walsin.com" is somehow owned by, or affiliated with Complainant.

Respondentís discussion of the Chinese meaning and translation of "walsin" is irrelevant because the instant dispute is over the right to use the English domain walsin.com, not for a Chinese character domain or a Chinese trademark.

If a word is not descriptive of the goods or services identified with the mark, the commonality of the word does not prevent trademark protection. (E.g., the word "apple" describes a particular piece of fruit, and "apple" would not be eligible for trademark protection for apples. However, APPLE describing computer related goods is eligible for trademark protection).

Registration of a mark on the US Principal Register provides a presumption that the mark is neither descriptive nor generic. (Abercrombie & Fitch Co. v. Hunting World, Inc., [1976] USCA2 141; 537 F.2d 4,11 (2d Cir. 1976). This presumption, taken with Complainantís well-known and long standing use of WALSIN, clearly establishes Complainantís valid and protectable interest in WALSIN.

Respondent registered the domain "walsin.com" on August 15, 1997, and over three years later, has not offered any products or services on the website. Respondent has not demonstrated any preparations to use the website to offer any products or services. Respondent has not used the domain "walsin.com" to identify any legitimate business name, and Respondent is not commonly known by either "walsin" or "walsin.com". The "whois" database shows registrant of "walsin.com" to be Walsin Net Technology, Inc. An extensive DialogWeb search of all company directories worldwide found no such company to exist. "Walsin Net Technology" neither appears to exist as a corporation nor as an entity of any form.

Complainant is the owner of valid U.S. Trademark No. 2,305,198 for WALSIN and has used WALSIN both as a corporate identity, and in association with the sale of electronic components for at least the past seven years. Complainantís registered US Trademark number gives a date of first use in the United States as June 8, 1995. Under US Trademark Law, this gives Complainant superior rights to the WALSIN mark. Blisscraft of Hollywood v. United Plastics Co., [1961] USCA2 537; 294 F.2d 694, 131 USPQ 55 (2^nd Cir. 1961, holding "Priority of user alone is controlling").

Respondent has attempted to sell the domain to Complainant for the valuable consideration of US $150,000, which is in excess of any documented out-of-pocket costs directly related to the domain name.

Complainant sent Respondent a "cease and desist" letter addressed to Respondentís address of record, to which Complainant received no reply. In Cigna Corporation v. Jit Consulting, (UDRP Proceeding Number AF-00174 2000), the panel found Respondent 's failure to answer Complainantís "cease and desist" letter advising of Respondentís domain name registration to be a violation of Respondentís trademark rights acted as an "admission-by-silence."

B. Respondent

Respondent registered "walsin.com" on August 14, 1997. This domain registration date is much earlier than the Complainantís trademark registration of January 4, 2000 (or their filing date of November 3, 1997). Respondent should therefore have priority with respect to the domain name rights.

"Walsin" is a common Chinese pronunciation of a name that is popularly used by many Chinese companies. The mere fact that Complainant has been able to obtain a trademark in one country does not entitle him to take away domain names that are common, generic words in other parts of the world. The word "walsin" is definitely not a distinctive word in other parts of the world.

Respondent has offered goods and services and has used the name as a part of the business development of Walsin Net Technology.

On numerous occasions between April and September of 1997, Mr. David Hsu and Mr. Clarence Hsu discussed the sales and investment shares in the business, Walsin Net Technology, Inc.

On numerous occasions during the time period of May to September 1997 Ms. Uyu Ying Chang discussed the development of Walsin Net Technology, Inc. to provide internet fax, webhosting, domain registration and other internet services in the Taiwan and the United States.

The name of Respondentís company is Walsin Net Technology, Inc. By use of the "net" it distinquishes it from the business name of Complainant. The registration and use of the domain name was an intregal part of Respondentís bona fide business activities.

Mr. Hsu has registered a Taiwan domain name "domain.com.tw" on October 20, 1997 using the email address of chsu@walsin.com. This demonstrated that Mr. Hsu did, in fact, use the domain name of walsin.com to conduct his internet service business.

Mr. Clarence Hsu purchased a web server as part of his plan to operate a web hosting business.

Walsin Net Technology, Inc. was a small, developing bona fide business in Taiwan that was developing and operating a business. In the United States classification system for types of businesses, the business would be classified as a sole proprietorship.

Respondent never received a "cease and desist" letter from Complainant.

Respondent did not use or register the name in bad faith. He registered the name to further his business enterprises and did not solicit the sale of the domain name to Complainant.

These proceedings are in English and they deal only with an English domain name and not with the right to use Chinese characters.

Complainant is the owner of the registered U.S. Trademark No. 2,305,198 for a distinctive design of the word WALSIN. A consumer desiring to contact Complainant, a publicly traded corporation and well known manufacturer of electronic components will mistakenly believe the website, "walsin.com" is somehow owned by, or affiliated with Complainant.

Respondent registered the domain "walsin.com" on August 15, 1997, and over three years later, has not offered any products or services on the website. Respondent has not demonstrated any preparations to use the website to offer any products or services. Respondent has not used the domain "walsin.com" to identify any legitimate business name, and Respondent is not commonly known by either "walsin" or "walsin.com". Respondent does not appear to be a business or a legal entity properly using the word "walsin."

Complainant has used WALSIN both as a corporate identity, and in association with the sale of electronic components for at least the past seven years. Complainantís registered US Trademark gives a date of first use in the United States as June 8, 1995. Under US Trademark Law, this gives Complainant superior rights to the WALSIN mark. Blisscraft of Hollywood v. United Plastics Co., [1961] USCA2 537; 294 F.2d 694, 131 USPQ 55 (2^nd Cir. 1961, holding "Priority of user alone is controlling").

Registration of a mark on the US Principal Register provides a presumption that the mark is neither descriptive nor generic. (Abercrombie & Fitch Co. v. Hunting World, Inc., [1976] USCA2 141; 537 F.2d 4,11 (2d Cir. 1976). This presumption, taken with Complainantís well-known and long standing use of WALSIN, establishes Complainantís valid and protectable interest in WALSIN.

Complainant sent Respondent a "cease and desist" letter addressed to Respondentís address of record, to which Complainant received no reply. There is no proof that Respondent received the letter.

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.

Complainant has proven this element.

Respondentís purported evidence of use of the domain name amounts to nothing more than a series of discussions of the development of a business in which it might use walsin.com. Respondent has still made no offerings of goods or services under the name walsin and the site www.walsin.com is stated to be "under construction".

Complainant has proven this element.

Respondent registered the domain name using a non-existent corporate name which still does not exist as a corporation or apparently any other type of legal entity. This is evidence of bad faith. (See for example, Universal Gift Certificate Company, LLC v. Alexico Healthcare Resources, Inc., Forum File No. FA0003000094318, March 17, 2000.) (finding that providing incorrect contact information during registration is evidence of bad faith.)

The domain "walsin.com" currently is for sale on the web site at www.greatdomains.com. In Cedar Trade Associates, Inc. v. Gregg Ricks, Forum File FA0002000093633, February 25, 2000, the Board found registering a disputed domain for sale with greatdomains.com shortly after registration constituted bad faith. Respondent admits to registering and being proprietor of the domain "domain.com.tw." The website at this domain is being used for the offering of domain names that correspond to famous trademarks, including walmart.com.tw, walmart.com.tw, and decca.com.tw. This is evidence that registering and selling domains is part of Respondentís business. Ownership of infringing domain names has been found to constitute bad faith in numerous UDRP decisions. Such activity by Respondent shows bad faith in registering the domain "walsin.com"

Respondent has attempted to sell the domain name to Complainant for $150,000. See Cream Pie Club v. Britany Halford, FA95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the Respondent offered the domain name for sale to the Complainant for $125,000). This is further evidence of Respondentís registration and use in bad faith.

Complainant has proven this element.