START-UP TRADEMARK OPPOSITION POLICY

DECISION

Huawei Technologies Co Ltd v. Xiao Tianping

Claim Number: FA0112000102793

PARTIES

The Complainant is Huawei Technologies Co., Ltd., Shenzhen, CHINA (“Complainant”).  The Respondent is Xiao Tianping, Shenzhen, CHINA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <huawei.biz>, registered with OnlineNIC dba ChinaChannel.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on December 7, 2001; the Forum received a hard copy of the Complaint on December 11, 2001.

On December 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On January 31, 2002 pursuant to STOP Rule 6(b), the Forum appointed Sandra Franklin as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has rights to its HUAWEI trademark.

Respondent does not have rights or legitimate interests in the <huawei.biz> domain name.

Respondent registered <huawei.biz> in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has registered the HUAWEI trademark in four different countries including China, the country where Respondent resides.  Complainant registered the HUAWEI trademark in relation to its telecommunication services, mobile phone services, wireless terminal, data communications apparatus, optical telecommunication apparatus, and computer programs.

As Complainant is the largest telecommunications equipment manufacturer in China, its trademark has produced substantial goodwill in Guangdong Province and throughout China.

                 

            Respondent registered the <huawei.biz> domain name on November 19, 2001.

 

DISCUSSION

Paragraph 15(a) of the STOP 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established rights in the HUAWEI mark through its use of the mark in relation to its business of manufacturing telecommunications equipment as well as its registrations of the mark in several countries.  The <huawei.biz> domain is identical to Complainant’s HUAWEI registered trademark. 

The Panel finds that STOP ¶ 4(a)(i) has been satisfied.

 Rights or Legitimate Interests

The Panel is allowed to determine Respondent does not have rights or legitimate interests in the disputed domain name because Respondent has failed to provide a Response to this claim.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent failed to furnish any information that would indicate it has a service or trade mark in the HUAWEI name or the identical domain name.  As a result, Respondent is presumed not to have any rights or legitimate interests pursuant to the STOP Policy ¶ 4(c)(i) with respect to the disputed domain name.

Due to the fame and substantial goodwill built up by Complainant’s mark, it can be inferred that Respondent registered an identical domain to capitalize on Complainant’s goodwill by diverting Complainant’s customers to Respondent’s website for commercial gain.  This behavior is not considered a bona fide offering of goods pursuant to STOP Policy ¶ 4 (c)(ii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainant’s HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).

There is no evidence, and Respondent has not furnished any evidence, that it is commonly known by the HUAWEI mark or the identical domain name.  As a result, Respondent is presumed not to have any rights or legitimate interests in the disputed domain pursuant to STOP Policy ¶ 4(c)(iii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).  Because Respondent’s HUAWEI name is well known throughout China, it can be presumed that Respondent is not commonly known by such a famous mark.  See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

            The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.

Registration or Use in Bad Faith

It is likely that due to Complainant’s popularity and the substantial good will associated with its mark, Respondent registered the identical domain name with the intention of commercially profiting from the sale of such a valuable domain name.  This activity suggests Respondent’s bad faith pursuant to STOP Policy ¶ 4(b)(i).  See Xerox Corp. v. Imaging Solution, D2001-0313 (WIPO Apr. 25, 2001) (finding that the Respondent registered the domain name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent).

Additionally, Respondent has demonstrated bad faith by registering a domain name that is likely to be falsely associated with Complainant’s business by Internet users.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel finds that STOP ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the Start-Up Trademark Opposition      Policy, the Panel concludes that relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <huawei.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against the domain name shall not be permitted.

Sandra Franklin, Panelist

Dated:  February 14, 2002

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