Generic Top Level Domain Name (gTLD) Decisions

DECISION

Fujian Hengan Holding Co. Ltd. v. Xu Feng

Claim Number: FA0204000109029

PARTIES

The Complainant is Fujian Hengan Holding Co. Ltd., Fujian, CHINA (“Complainant”) represented by Joseph Modigliani.  The Respondent is Xu Feng Lanven Promotions Ltd., Auckland, New Zealand (“Respondent”) represented by YiNi Cheng.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <hengan.com>, registered with OnlincNIC d/b/a ChinaChannel.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.

The Hon. William H. Andrews

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 2, 2002; the Forum received a hard copy of the Complaint on April 16, 2002.

On April 19, 2002, OnlincNIC d/b/a ChinaChannel.com confirmed by e-mail to the Forum that the domain name <hengan.com> is registered with OnlincNIC d/b/a ChinaChannel.com and that the Respondent is the current registrant of the name.  OnlincNIC d/b/a ChinaChannel.com has verified that Respondent is bound by the OnlincNIC d/b/a ChinaChannel.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 April 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 9, 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@hengan.com by e-mail.

A timely Response was received and determined to be complete on May 8, 2002.

On May 23, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Hon. William H. Andrews as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent’s registration and use of the domain name

Hengan.com violates ICANN Policy par. 4 (a).  Specifically, Complainant alleges that the domain name is:

1) Identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2) that Respondent should be considered as having no rights or legitimate interests with respect to the domain name that is the subject of the complaint; and

3) that the name was registered and is being used in bad faith.

B. Respondent

Respondent concedes that the disputed domain name is identical or similar to the Complainant’s trading name “HengAn”.  Respondent contends, however, that:

1) Complainant does not have a trademark or service mark under the term “HengAn.” 

2) Alternatively, Respondent argues that even if the Complainant has rights in such a mark, those rights are not exclusive because the term “HengAn” has a broader meaning beyond identification of the Complainant’s business. 

3) Finally, Respondent contends that Complainant has advanced no evidence, beyond mere speculation and presumption that Respondent has acted in bad faith in its registration or usage of the disputed domain site.

C. Additional Submissions

The parties tendered no additional submissions.

FINDINGS: Fujian Hengan Holding Company, Ltd. (“Fujian Hengan”) is a wholly owned subsidiary of Hengan International Group.  Fujian Hengan manufactures sanitary napkins and baby diapers in China and also exports to the Republic of Korea.  Fujian Hengan has registered the term “Hengan” in China, Hong Kong and the Republic of Korea.  Fujian Hengan registered the domain name <Hengan.com> in October, 1997 and had been using it for its website and e-mail addresses since that time.  Fujian Hengan’s registration expired in December, 2001. 

On December 23, 2001, the Respondent, Mr. Xu Feng, registered the site for his business in clothing, swimwear, shoes and other products.  Respondent has requested a website designer to further develop his business on line.

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 canceled 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 under Policy Paragraph 4(a)(i)

Respondent admits that the domain name that it has registered is identical or similar to the Complainant’s trade name.  Indeed, the domain name, <hengan.com> is identical to the registered HENGAN mark because it incorporates the matching mark.  See Little Six, Inc. v. Domain for Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001).  The addition of a generic top level domain (“gTLD”), in this case ‘.com’, is an insignificant factor in distinguishing the names.  Respondent contends that the Complainant has no rights to the name.  Complainant, however, has submitted evidence of numerous trademarks it has registered in the People’s Republic of China, Hong Kong and the Republic of Korea.  Moreover, the Complainant has been using the site in its business for four years and therefore has rights to the mark.  Accordingly, the Panel finds that Complainant has met this element.

Rights or Legitimate Interests

There are several factors that the Panel may consider in determining whether the Respondent has rights or legitimate interests in using the domain name despite its similarity to Complainant’s mark.  Among those factors are:

i. Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona-fide offering of goods or services; or

ii. Whether Respondent has been commonly known by the domain name, even if the Respondent has not acquired trademark or service mark rights; or

iii. Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Here, Respondent concedes that it has not been commonly known by the Hengan name in the past. Similarly, Respondent has not established any trademark or service mark in the disputed name.  Respondent, therefore, has no legitimate rights to the use of the name pursuant to Policy par. 4(c)(ii).  See 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).

Complainant also alleges that Respondent has made no legitimate use of the domain name in accordance with Policy par. 4(c)(ii) and 4(c)(iii). Complainant notes that the site is primarily undeveloped, specifically with reference to the “Our Factory” and “News” sections.  Complainant also argues that the passage of three months without further completion of the site establishes that the Respondent has no legitimate rights.  Respondent contends that it is making efforts to construct and develop the site further by hiring a website designer.  Respondent, however, has not documented any of these efforts and has not shown or described other demonstrable efforts.  Respondent’s statements concerning future developments do not establish its current right to use of the domain name. See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding Respondent’s unsupported claim that a consumer chat website would be forthcoming did not rise to the level of rights or legitimate interests under Policy ¶ 4(a)(ii)); See also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); See also Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).  Respondent is not making a non-commercial use of the site, and at present, is not making any other “fair use” of the site.  Accordingly, the Panel finds that the Respondent does not have rights to the domain name under the Policy.

Registration and Use in Bad Faith

The Panel may consider a number of factors in reaching a determination on the question of bad faith including, but not limited to, those factors enunciated by Paragraph 4(b) of the ICANN Policy.  Here, the Panel finds that the Complainant was the previous registrant of the domain name, <hengan.com>.  That registration lapsed through an oversight in December, 2001 and Respondent subsequently registered the same site thereafter on December 23.  The Complainant had been using the site for four years previous to Respondent’s registration.  On these facts, the Panel finds that the Respondent’s actions were taken in bad faith and done for the purpose of diverting users to Respondent’s site. See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

DECISION

For the foregoing reasons, the Panel finds that the domain name used by the Respondent is identical to the mark in which the Complainant has rights; that Respondent has no rights or legitimate interests in respect to the domain name; and that registration of the domain name by the Respondent was done in bad faith. Accordingly, the relief sought by Complainant shall be granted and the domain name <hengan.com> shall be transferred to the Complainant.

William H. Andrews, Panelist

Dated: June 6, 2002

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