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Colgate-Palmolive Investments (BVI) Ltd. v. Chaoyangshisanxiaoshiyeyouxiangongsi [2004] GENDND 1238 (2 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Colgate-Palmolive Investments (BVI) Ltd. v. Chaoyangshisanxiaoshiyeyouxiangongsi

Case No. D2004-0525

1. The Parties

The Complainant is Colgate-Palmolive Investments (BVI) Ltd. of New York, New York, United States of America, represented by Ms. Sandra Edelman of Dorsey & Whitney, LLP of New York, New York, United States of America.

The Respondent is Chaoyangshisanxiaoshiyeyouxiangongsi of Guangdong, China. The Respondent is not represented.

2. The Domain Names and Registrars

The disputed domain name <san-xiao.com> is registered with BulkRegister.com.

The disputed domain name <sanxiao-toothbrush.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2004. On July 19, 2004, the Center transmitted by email to BulkRegister.com and Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On July 19, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. On July 20, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2004.

The Center appointed the Honourable Sir Ian Barker Q.C. as the sole panelist in this matter on August 25, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Matters

The Complainant has used, registered and applied to register the trademark SANXIAO and variations thereof (the “SANXIAO trademark”) in the People’s Republic of China and in over 60 other countries around the world for a number of goods, including, but not limited to, toothbrushes, tooth paste, soap and shampoo.

The Complainant’s SANXIAO trademark is the subject of the following registrations, among others, in the People’s Republic of China:

Trademark Reg. No. Reg. Date Goods

SANXIAO (Chinese characters & 528393 09/01/90 Toothbrushes (Cl. 21)

English Pin Yin characters) & Device

SANXIAO (English Pin Yin) 875282 09/28/96 Toothbrushes (Cl. 21)

In addition, the Complainant or its affiliated companies own the registrations for the domain names <sanxiao.com>, <colgatesanxiao.com> and <colgatesanxiao.com.cn>, which embody its SANXIAO trademark. The Complainant uses the domain names <colgatesanxiao.com> and <colgatesanxiao.com.cn> to host a website that offers information concerning Complainant’s products sold and promoted in the People’s Republic of China and worldwide under the SANXIAO trademark.

The Complainant is a subsidiary of the Colgate-Palmolive Company (CPC) the products of which are marketed in over 200 countries throughout the world. The Complainant owns certain trademarks used by CPC and its subsidiaries, including the SANXIAO trademark, which is used by Colgate Sanxiao Co., Ltd. (“CSX”) in the People’s Republic of China and worldwide in connection with the sale, distribution and marketing of toothbrushes, toothpaste and soap, among other goods.

CSX was formed in June 2000, as a joint venture between CPC and Jiang Su Sanxiao Group (“SX Group”). CSX, through the SX Group and its predecessor, has used the SANXIAO trademark since at least as early as 1990. SX Group was incorporated on July 18, 1995, and has used SANXIAO as part of its trade name since at least as early as that date.

CSX is one of the biggest private enterprises in the Jiangsu province of the People’s Republic of China, and it is the world’s largest manufacturer of toothbrushes. Located in the town of Hangji in the eastern suburb of Yangzhou City, CSX’s facility covers an area of over 300,000 square meters and employs more than 3,000 workers. It has over 200 toothbrush production lines, which produce over 3.5 million toothbrushes per day.

CSX currently owns more than half of the market share for toothbrushes in the People’s Republic of China. In 2002, CSX sold 726 million toothbrushes under the SANXIAO trademark, generating more than 255 million RMB in revenues. In 2003, CSX sold 696 million toothbrushes under the SANXIAO trademark, generating more the 239 million RMB in revenues.

CSX also manufactures, sells and markets other products under the SANXIAO trademark, including toothpaste and soap. In 2002 and 2003, CSX sold 4,070 and  2,968 tons, respectively, of toothpaste under the SANXIAO trademark, generating over 45 million and 32 million RMB, respectively, in revenues. In 2002 and 2003, CSX sold 15,751 and 13,365 tons, respectively, of soap under the SANXIAO trademark, generating over 131 million and 105 million RMB, respectively, in revenues.

In addition, to its operations in the People’s Republic of China, CSX has also exported significant quantities of toothbrushes and soap under the SANXIAO trademark to countries throughout the world.

CSX has spent considerable time, effort and money for the research, development, advertising and promotion of its products, marketed and sold under the SANXIAO trademark. The SANXIAO trademark serves to identify a single source, namely, Complainant and its affiliated companies and their respective products.

The Respondent registered the Domain Names <sanxiao-toothbrush.com> on July 17, 2000, and <sin-xiao.com> on February 1, 2001. Both of the Domain Names resolve to the same website, located at “www.sanxiao-toothbrush.com.”

These factual findings are taken from the Complaint. In the absence of any Response from the Respondent, the Panel presumes their accuracy.

5. Parties Submissions

A. Complainant

The Respondent’s Domain Names are essentially identical and certainly confusingly similar to Complaint’s SANXIAO trademark. The primary element of the disputed Domain Names <sanxiao-toothbrush.com> and <san-xiao.com> (sanxiao) is identical to Complainant’s SANXIAO trademark. The main difference between Respondent’s domain name <sanxiao-toothbrush.com> and Complainant’s SANXIAO trademark is the addition of the generic term “toothbrush.” Prior panel decisions have held that the addition of such a generic term is not sufficient to avoid confusion. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (“In the Panel’s view, Respondent’s disputed domain names <chanelstore.com> and <chanelfashion.com> are confusingly similar to Complainant’s famous trademark ‘Chanel’. The addition of the generic terms ‘store’ and ‘fashion’ are not sufficient to avoid confusion.”).

The Respondent’s addition of the generic term “toothbrush” to form the domain name <sanxiao-toothbrush.com> describes the goods offered by Complainant under the SANXIAO trademark. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 (the addition of the generic term “perfumes” to the trademark CHANEL to form the domain name <chanelperfumes.com> appears to increase the likelihood of confusion because the term “perfumes” describes complainant’s business).

The disputed Domain Names are identical or confusingly similar to Complainant’s SANXIAO trademark notwithstanding the presence of a hyphen in each. Prior decisions have held that the addition or omission of a hyphen is immaterial with regard to whether a domain name is identical or confusingly similar to a trademark. See Luxottica S.r.l. v. Lux Ottica LLC, WIPO Case No. D2002-0904 (the domain name <lux-ottica.com> found identical or confusingly similar to the trademarks LUXOTTICA and LUX OTTICA & design).

Respondent has no Rights or Legitimate Interests

The Respondent cannot demonstrate that it has any rights or legitimate interests in the Domain Names. The Complainant’s registrations for the SANXIAO trademark evidence its exclusive rights in such mark in connection with the goods covered by those registrations, and the Complainant has not authorized the Respondent to use the SANXIAO trademark.

The Respondent has not made use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services, nor could the Respondent do so in light of the fame of the Complainant’s SANXIAO trademark and the Complainant’s exclusive rights in the SANXIAO trademark with respect to toothbrushes, toothpaste and soap, among other products.

The Respondent (as an individual, business or organization) has not been commonly known by the disputed Domain Names. The disputed names are misleading and obviously meant to cause confusion and free-ride on the goodwill associated with Complainant’s famous SANXIAO trademark. See Luxottica S.r.l. v. Lux Ottica LLC, supra (“The Respondent could have chosen a domain name not associated with Complainant’s trademarks LUXOTTICA and LUXOTTICA and design as the substantive part of Respondent’s domain name. By choosing a domain name confusingly similar to the Complainant’s trademark LUXOTTICA the Respondent has not established that it is making a legitimate non-commercial or fair use of the domain name without interest for commercial gain to misleadingly divert consumers to its site.”).

In order for Respondent to show that it has legitimate rights in the Domain Names based upon a claim that it is commonly known by the Domain Names, the Respondent must provide adequate extrinsic proof that a corresponding group of consumers who are likely to access its website, associates the Domain Names with the Respondent rather than with the Complainant. See Dell Computer Corporation v. Logo Excellence, WIPO Case No. D2001-0361. Given the widespread, worldwide notoriety enjoyed by the Complainant’s SANXIAO trademark, it is impossible for the Respondent to meet that burden.

The Respondent is not making a legitimate noncommercial or fair use of the disputed Domain Names without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish the trademarks at issue. The Respondent’s use of the Domain Names is commercial in that the Respondent uses them in connection with a website through which the Respondent sells and markets goods identical to those covered by Complainant’s SANXIAO trademark. The Respondent’s use of the disputed Domain Names does not constitute fair use because such use infringes upon Complainant’s famous SANXIAO trademark in order to make a profit. See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, National Arbitration Forum Case No. FA94956 (where a domain name identical or confusingly similar to complainant’s registered trademark was used by respondent to sell goods identical to those covered by complainant’s registered trademark, such infringing use by respondent was not bona fide, fair or legitimate).

The Respondent is using the disputed Domain Names for commercial gain to divert consumers misleadingly to its website. It is a direct competitor of CSX and uses the Domain Names to re-route Internet traffic, likely destined for CSX, to its own website.

Bad Faith

The Respondent has registered the disputed Domain Names without any bona fide basis for such registration in an attempt to capitalize unfairly on the goodwill of the Complainant’s famous SANXIAO trademark. Bad faith is found if it is unlikely that the registrant would have selected the domain name without knowing of the reputation of the trademark in question. Such a finding is particularly apt where the complainant’s trademark is famous, as is the case with the SANXIAO trademark. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith and use of registration found because <veuveclicquot.org> is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith).

The Respondent selected the disputed Domain Names with full awareness of the Complainant’s famous SANXIAO trademark and the products associated with that mark. Respondent is a direct competitor of CSX, and it was formed after CSX’s first use of the SANXIAO trademark. To have proceeded with registration in the face of such knowledge demonstrates bad faith on the part of Respondent. See Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064.

The Respondent registered the Domain Names with the specific intent to cause consumer confusion and to free-ride on the vast goodwill associated with Complainant’s SANXIAO trademark. The Respondent registered the Domain Names with full knowledge that they are identical or confusingly similar to the Complainant’s SANXIAO trademark in order to re-route Internet traffic destined for the website operated by the Complainant and its affiliated companies to the Respondent’s website.

The Respondent did not even come into existence under any corporate name that incorporates “Sanxiao” until well after the first use and registration of the SANXIAO trademark by Complainant, its affiliated companies and their predecessors, which occurred no later than 1990.

The Respondent is making use of the Domain Names in bad faith to operate a website through which it promotes an assortment of goods, namely, toothbrushes and soap, that are covered by the Complainant’s registrations for the SANXIAO trademark.

Given the fame of the Complainant’s SANXIAO trademark and the fact that the Respondent’s Domain Names are used in connection with the sale and offer for sale of goods identical to those of Complainant, the Domain Names are likely to confuse consumers into believing that the Respondent’s business is affiliated with or endorsed by the Complainant, or that the Respondent’s use of the Domain Names is authorized by the Complainant. See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, supra (use of domain name identical or confusingly similar to complainant’s registered trademark on goods identical to those covered by complainant’s registered trademark infringes upon complainant’s trademark and constitutes bad faith). The Respondent manufactures and sells toothbrushes using the brand name “Mengshi” which fact further demonstrates the Respondent’s lack of rights.

The Complainant enjoys exclusive rights in the famous SANXIAO trademark with respect to goods such as toothbrushes and soap by virtue of its registrations for the mark and its long-term and widespread use of the mark. The Complainant has never consented to Respondent’s registration of the SANXIAO trademark as a domain name, nor has the Complainant ever granted any of its proprietary rights to the Respondent.

The Respondent’s use of the disputed Domain Names suggests a false designation of origin or sponsorship for the Respondent’s goods and services. The Complainant submits that the disputed Domain Names were undoubtedly chosen by the Respondent: (1) in an effort to free-ride on the goodwill associated with the distinctive SANXIAO trademark in which the Complainant enjoys exclusive rights; and/or (2) for the purpose of creating the false impression that the Respondent is an authorized agent or licensee or representative of the Complainant. Therefore, the Respondent has registered and is using the disputed Domain Names in bad faith.

B. Respondent

The Respondent has filed no response and has made no submissions.

6. Discussions and Findings

Paragraph 15(a) of the Rules instructs the 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.”

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no legitimate rights or interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names are confusingly similar to the trademarks in which the Complainant has rights. The analysis of authority recorded above in the submission of the Complainant is accepted by the Panel and does not need to be repeated.

Rights or Legitimate Interests

The Complainant gave the Respondent no legitimate rights or interests in respect of the disputed domain names. The fact, on its own, can be sufficient to prove the second criterion. Paragraph 4(c) of the Policy sets out matters which a Respondent is entitled to raise which, if found by a Panel to be proved after an evaluation of all evidence presented, could demonstrate a Respondent’s rights or legitimate interests to a domain name. None of these has been demonstrated, let alone raised. The second criterion is therefore proved. The submissions of the Complainant are accepted under this heading.

Bad Faith

Likewise, bad faith has been patently demonstrated for the reasons outlined in the Complainant’s submissions. This is a blatant attempt by a competitor to capitalize unfairly on the Complainant’s mark. The disputed Domain Names clearly imply affiliation or some association with the Complainant. Internet users are clearly likely to be confused by the disputed Domain Names.

7. Decision

For the foregoing reasons, the Panel decides:

(a) That the domain names <san-xiao.com> and <sanxiao-toothbrush.com> are confusingly similar to the trademarks in which the Complainant has rights; and

(b) That the Respondent has no rights or legitimate interests in respect of the domain names; and

(c) That the domain names have been registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <san-xiao.com> and <sanxiao-toothbrush.com> be transferred to the Complainant.

Hon. Sir Ian Barker, QC
Sole Panelist

Dated: September 2, 2004