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Generic Top Level Domain Name (gTLD) Decisions |
Hongdou Group v. Ms. Li Li
Claim Number: FA0205000113258
PARTIES
Complainant
is Hongdou Group, Jiangsu Province,
CHINA (“Complainant”) represented by Zhu
Changyong, of HiChina Web Solutions
Limited. Respondent is Ms. Li Li, Kowloon, HONG KONG
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hongdou.com>,
registered with Namescout.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 6, 2002; the Forum received
a hard copy of the Complaint
on April 29, 2002.
On
May 6, 2002, Namescout.com confirmed by e-mail to the Forum that the domain
name <hongdou.com> is
registered with Namescout.com and that the Respondent is the current registrant
of the name. Namescout.com has verified
that Respondent is bound by the Namescout.com registration agreement and has
thereby agreed to resolve
domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
2002 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@hongdou.com by e-mail.
A
timely Response was received and determined to be complete on May 29, 2002.
On July 8, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed John J. Upchurch
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant is the owner of several
registrations worldwide for the mark
HONGDOU.
2. The disputed domain name <hongdou.com>
uses the identical text as Complainant’s mark, “Hongdou.”
3.
Respondent has no rights or legitimate interests in the HONGDOU mark.
4.
Respondent registered the domain name <hongdou.com> in bad
faith.
B.
Respondent
1.
Respondent asserts that Complainant’s alleged HONGDOU mark is a
Chinese Pinyin, a kind of seed of a
traditional Chinese plant. Respondent further argues that if Complainant’s mark
is translated directly
into English its meaning is “red bean.” Respondent
states that “Hongdou” is very famous and meaningful for all Chinese people as
being symbolic of love and “missing-you.” Respondent argues that Complainant’s
alleged mark is generic, and that Complainant cannot
establish significant
secondary meaning in the mark because “Hongdou is [part] of China[‘s] cultural
heritage, like [the] Great Wall,
panda or dragon, [a] phoenix to Chinese
people.”
2.
Respondent does have legitimate interests in a common word or
description that is generic, such as “HONGDOU.”
3.
Respondent is operating a legitimate web site in good faith.
FINDINGS
The requested relief should be denied.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 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
Respondent’s
<hongdou.com> domain name is identical to Complainant’s registered
HONGDOU mark as it mirrors Complainant’s mark in its entirety, in spelling and
form. The addition of a generic top-level domain (“gTLD”) is insignificant when
determining “identicality” pursuant to Policy ¶ 4(a)(i).
See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the gTLD “.com” after the
name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
Rights or Legitimate Interests
Respondent
argues that “Hongdou” represents a Chinese emotional attachment, and not
Complainant’s trademark in clothes.
Respondent makes reference to CIHAI (China’s authoritative dictionary)
which states the definition of “Hongdou” as, “A general description
of seeds of
certain plants, red color some have a black bottom or black spot on the
surface. From ancient times, it is usually regarded
as the symbol of love or missing-you.”
Respondent
is using the generic “Hongdou” word in connection with its website. Respondent
has developed the website since registering
the domain name on March 18, 2002
and desires to develop the Chinese Hongdou Festival into something similar in
scale to the “West’s
Valentine’s Day.” Respondent’s development of the website,
in connection with its domain name reflecting a generic Chinese word,
represents a bona fide offering of goods or services under Policy ¶ 4(c)(i). See
Tough Traveler, Ltd. v. Kelty Pack,
Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a
legitimate interest in the domain name, <kidcarrier.com>,
as a generic
term for a class of products that Respondent sells); see also Sweeps Vacuum & Repair Ctr., Inc. v. Nett
Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic
domain name, <sweeps.com>, where Respondent used a legitimate
locator
service (goto.com) in connection with the domain name); see also Shirmax Retail Ltd. v. CES Mktg., Inc.,
AF-0104 (eResolution Mar. 20, 2000) (stating “given the generic nature of the
domain name, [Respondent] has at least a tenable
argument that its use on the
web merely for the purpose of redirecting visitors to a different site
constitutes a legitimate fair
use, as long as this use is not misleading to
consumers and does not tarnish a trademark”).
Respondent demonstrates, pursuant to Policy ¶
4(c)(ii), that it is currently providing the original meaning of “Hongdou” via
its disputed
<hongdou.com> website. See
Western
Hay Co. v. Forester, FA
93466 (Nat. Arb. Forum Mar. 3, 2000) (finding that Respondent was using the
domain names for a legitimate purpose); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding
legitimate interests in the domain name <racegirl.com> where domain name
is generic
and generally descriptive of Respondent’s love of racing and where
Respondent intends to use the domain name for the noncommercial
purpose of
encouraging women racecar drivers).
Respondent maintains that it registered
the disputed domain name free of any motivation to commercially benefit from
Complainant’s
mark, as Respondent claims it had no knowledge of Complainant.
Respondent asserts that the website is non-profit, and does not buy
or sell any
goods but imparts knowledge of traditional Chinese culture and represents a
legitimate noncommercial use of the domain
name under Policy ¶ 4(c)(iii). See
Lockheed Martin Corp. v. Etheridge,
D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the
<missionsuccess.net> domain name where she was
using the domain name in
connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum
May 17, 2001) (finding that the Respondent has rights and legitimate interests
in the domain name where
Respondent made a non-commercial use of BAJABOATS.COM
and received no funds from users of the site connected to the domain name).
Registration and Use in Bad Faith
As
Respondent is determined to have rights and legitimate interests in the
disputed domain name, a finding of bad faith is precluded.
Respondent never
intended to sell or transfer the domain name, was unaware of Complainant’s
presence or rights in an unrelated industry
reflecting a generic mark, and never
intended to commercially benefit from the registration and use of the website. See
Pensacola Christian Coll.
v. Gage, FA
101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that after Respondent is
determined to have rights and legitimate interests in
the disputed domain name,
there is no need to decide the issue of bad faith); see also
Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii),
"[b]ad faith intent … shall not be found in any case
in which the court
determines that the person believed and had reasonable grounds to believe that
the use of the domain name was
a fair use or otherwise lawful."
DECISION
Accordingly, the Panel finds for the
Respondent, and the relief requested by the Complainant is hereby DENIED.
John J. Upchurch,
Panelist
Dated: July 17, 2002
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