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The
Parties Information
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Claimant
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John Swire &
Sons Limited
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Respondent
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Tien Fu Chiu
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Procedural
History
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On 23 February 2004, the Complainant filed a
Complaint against the Respondent with the Hong Kong office of the
Asian Domain
Name Dispute Resolution Centre (“ADNDRCâ€ﾝ).
On
25 February 2004, ADNDRC informed the Registrar of the disputed
domain name, OnlineNIC (the “Registrarâ€ﾝ),
that a Complaint had been filed against the Respondent.
On
28 February 2004, ADNDRC informed the Respondent that a Complaint
had been filed against him.
On 3 March 2004, ADNDRC
informed the Respondent that he had 20 calendar days from 3 March
2004 to submit a Response.
On 8 March 2004, the Complainant
informed ADNDRC that the disputed domain name had been transferred
from the Respondent to one
Chiou Sheng Yuan on 26 February 2004,
and that, pursuant to Paragraph 8(a) of the Uniform Domain Name
Dispute Resolution Policy
(the “Policyâ€ﾝ),
the Respondent could not transfer the disputed domain name after a
Complaint had been filed.
On 9 March 2004, ADNDRC informed
the Registrar that the disputed domain name had been transferred
in violation of Paragraph
8(a) of the Policy, and asked the
Registrar to investigate the issue.
On 10 March 2004, the
Registrar informed ADNDRC that, the disputed domain name had been
locked, and that the transfer that had
been made in violation of
Paragraph 8 of the Policy had been rendered invalid.
On 15
March 2004, ADNDRC informed the Complainant that the WHOIS
information had been changed to reflect the Respondent as the
registrant of the disputed domain name.
On 16 March 2004,
the Respondent asked to extend the deadline for submitting a
Response to 5 April 2004. The Respondent also
asked to submit his
Response in Simplified Chinese Language.
On 17 March 2004,
ADNDRC informed the Respondent that he could file the Response in
the language he found appropriate. ADNDRC
also informed the
Respondent that the Complainant objected to the extension of time
to 5 April 2004, but had agreed to accept
a shorter extension of 7
days. Accordingly, the new deadline for the submission of the
Response was 30 March 2004.
On 29 March 2004, the
Respondent submitted a Response to ADNDRC.
On 29 April
2004, ADNDRC notified the parties of the appointment of a
three-member panel consisting of Mr Michael Hwang SC,
Mr Edward
Chiasson QC and Mr Loke Khoon Tan (the “Panelâ€ﾝ).
On
12 May 2004, the Panel requested ADNDRC for an extension of time
for rendering the Decision.
On 13 May 2004, ADNDRC
notified the parties that the Decision would be rendered on 21
June 2004.
On 16 June 2004, the Panel requested ADNDRC for
a further extension of time for rendering the Decision. On the
same day, ADNDRC
extended the time for rendering the Decision to
28 June 2004.
On 24 June 2004, the Panel requested ADNDRC
for another extension of time for rendering the Decision. On the
same day, ADNDRC
confirmed that the deadline for rendering the
Decision had been extended to 12 July 2004.
Both Parties
confirmed that no legal proceedings had been commenced by them in
conjunction with or in relation to the disputed
domain name.
The
Panel finds that the Administrative Panel was properly constituted
and appointed in accordance with the Rules for Uniform
Domain Name
Dispute Resolution Policy (the “Rulesâ€ﾝ)
and the ADNDRC Supplemental Rules (the “Supplemental
Rulesâ€ﾝ).
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Factual
Background
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For
Claimant
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Complainant’s
Submissions
The following information derives from the
Complaint.
The Complainant is a company incorporated in
England. Founded in Liverpool, U.K. in 1816, the Complainant began
trading in China
in the early 1860s. Its first Far Eastern office
was established in Shanghai in 1866. In 1914, the Complainant
became a limited
company by the name of John Swire & Sons
Limited.
The Complainant states that it has global
interests, but that its activities are concentrated in the Asia
Pacific region. The
majority of its businesses in this area come
under Swire Pacific Limited and are grouped into five operating
divisions: property,
aviation, beverages, marine services and
trading & industrial. The Swire Group of companies (to which
the Complainant belongs)
currently employs over 120,000 employees
worldwide.
The Complainant states that its full name in
Chinese is ‘英国太åﾏ¤æœ‰é™ﾐå…¬åﾏ¸â€™,
with the third and fourth characters constituting the distinctive
part of the Complainant’s
Chinese name. The use
of these characters in the disputed domain name form the subject
of these proceedings.
The Complainant states that it has
been using the name “太åﾏ¤â€ﾝ
for almost 200 years in relation
to its businesses all over the world. In particular, the
Complainant states that it is the
registered proprietor, either in
its own right or through its subsidiaries, of numerous trademarks
in multiple classes for
the ‘太åﾏ¤â€™
mark in Cambodia, China, Canada, Hong Kong, Malaysia, Taiwan and
Vietnam.
Further, the Complainant’s
wholly-owned subsidiary in Hong Kong, John Swire & Sons (H.K.)
Limited has
registered a total of 28 domain names, all of which
contains the Complainant’s mark “太åﾏ¤â€ﾝ,
such as “太åﾏ¤.netâ€ﾝ,
“太åﾏ¤ä¸å›½.comâ€ﾝ
and “太åﾏ¤é¦™æ¸¯.comâ€ﾝ.
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For
Respondent
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Respondent’s
Submissions
The following information derives from the
Response.
The Respondent has been identified as one Chiu
Tien Fu of HongQi, ShaHe, Guangzhou, Guangdong, China. The
Respondent’s
e-mail address has been identified
in the Complaint as a8@mail.com. The Respondent does not purport
to have any authorized
representative in the present
administrative proceedings, although the Complainant has
identified one Henry Yau (“Henryâ€ﾝ)
of unknown address, telephone number and facsimile number as the
Respondent’s authorized representative.
The
e-mail address of Henry is identified as on888@yahoo.com and
5y@sina.com.
The type of business the Respondent is engaged
in is unknown, although it appears that the Respondent has set up
a number of
non-commercial websites to promote love and charity
and care for the human race to the public.
Language of the
Proceedings
Paragraph 11 of the Rules provides that “the
language of the administrative proceeding shall be the language
of
the Registration Agreement, subject to the authority of the Panel
to determine otherwise, having regard to the circumstances
of the
administrative proceedingâ€ﾝ.
In the present proceedings, the Panel notes that Complainant has
submitted his Complaint in English, whereas the Respondent
has
submitted his Response in Chinese. The Respondent asserts that the
language of his Registration Agreement is Chinese, and
that
accordingly, the language of the proceedings should be in Chinese.
However, in view of the fact that the working language
of the
Panelists is the English Language, the Panel has decided that the
language of the proceedings shall be English.
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Parties'
Contentions
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Claimant
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Complainant
(a) Name is identical or
confusingly similar to a trademark or service mark in which the
complainant has rights
The Complainant asserts that the
Complaint is based on its registrations for the “太åﾏ¤â€ﾝ
mark. The full name of the
Complainant in Chinese is “英国太åﾏ¤æœ‰é™ﾐå…¬åﾏ¸â€ﾝ.
The Complainant asserts that, since the first two characters of
its Chinese name means “Englandâ€ﾝ,
while the last four characters are the generic term for “limited
companyâ€ﾝ,
the distinctive part of the Complainant’s
Chinese name is therefore the third and fourth characters
“太åﾏ¤â€ﾝ.
The Complainant contends that the two characters “太â€ﾝ
and “åﾏ¤â€ﾝ
when used together is not a term
commonly used in everyday Chinese language, but is an invented
name.
The Complainant submits that all the companies within
the Swire group incorporate the registered trademark “太åﾏ¤â€ﾝ
as part of the companies’
names. The Complainant together with its group of companies are
commonly known
as, and referred to as “The
Swire Groupâ€ﾝ
in English and
“太åﾏ¤é›†å›¢â€ﾝ
in Chinese.
The
Complainant affirms that it has used the registered trademark
“太åﾏ¤â€ﾝ
for almost two hundred years
throughout the world in relation to its various fields of
businesses. Accordingly, the Complainant
contends that, it has
established a unique and protectable reputation in the
“太åﾏ¤â€ﾝ
mark, and that the public will
associate the “太åﾏ¤â€ﾝ
mark exclusively with the
Complainant.
The Complainant submits that by comparing the
disputed domain name with the Complainant’s
mark, it is clear
that the disputed domain name has incorporated
the Complainant’s mark in its entirety.
(b)
Respondent has no rights or legitimate interests in respect of the
disputed domain name
The Complainant asserts that the
Respondent has no rights or legitimate interests in respect of the
disputed domain name because
the Respondent’s
name is different from the disputed domain name, and the
Respondent is not commonly known
by the disputed domain name.
(c)
Respondent registered and has used the disputed domain name in bad
faith
The Complainant submits that the disputed domain name
was registered and used in bad faith, and that, the registration
of a
“.comâ€ﾝ
domain name signifies a
“commercial enterpriseâ€ﾝ,
indicating the Respondent’s intention to use
the disputed domain name for a commercial purpose.
The
Complainant further submits that, the Respondent was actually a
bad-faith pre-emptive registrant, who registered the disputed
domain name with the sole purpose of selling, renting, or
otherwise transferring the disputed domain name registration for
profits. The Complainant submits the following facts in support of
this allegation.
The Complainant’s
authorized representative sent a “cease and
desistâ€ﾝ
letter by e-mail to the then
registrant, Qiu Shengjie, on 15 October 2003. On 16 October 2003,
the Complainant’s
authorized representative
received an anonymous e-mail from the e-mail addresses of
5y@sina.com and on888@yahoo.com, stating
that the sender’s
friend owned the disputed domain name, and offered to sell the
disputed domain name for
the price of USD$100,000. The Complainant
states that it was subsequently confirmed that the sender was
Henry. The Complainant
then offered to reimburse Qiu Shengjie the
out-of-pocket expenses incurred by him in registering the disputed
domain name.
Henry replied by e-mail, confirming his authority to
act on behalf of Qiu Shengjie, and stating that USD$100,000 was
the cheapest
price he could offer for the sale of the disputed
domain name.
Subsequently, the Complainant conducted an
updated WHOIS search with the Registrar on 13 January 2004, and
found that the registrant
of the disputed domain name had changed
from Qiu Shengjie to Chen Qingrui. In order to ascertain Henry’s
authority to act for the new registrant, Chen Qingrui, the
Complainant sent an e-mail to Henry on 13 January 2004, asking for
his confirmation that he had authority to act on behalf of Chen
Qingrui. In an e-mail dated 13 January 2004, Henry repeated
his
offer to sell the disputed domain name, and confirmed that he had
the authority to act on behalf of Chen Qingrui.
Subsequently,
the Complainant’s authorized representative
sent an e-mail to Chen Qingrui, on 20 February
2004, seeking
confirmation that Henry had the authority to act on Chen
Qingrui’s behalf. Henry replied to
this e-mail
on 20 February 2004 and 22 February 2004, repeating the offer to
sell the disputed domain name.
The Complainant relies on
the ADNDRC decisions of DE-020006, dated 6 November 2002,
concerning the disputed domain name of
www.raineandhornecommercial.com and, decision DE-0200002, dated 3
August 2002, concerning the disputed domain name of www.hktdc.com.
In DE-020006, the Panel decided that the respondent’s
offer for the sale of the said domain name at a cost
ten times
greater than his out-of-pocket expense was unreasonable, and held
that the respondent did not register the said domain
name in good
faith. In DE-020002, the Panel decided that the respondent’s
offer of USD$1,500 for the sale
of the disputed domain name was
made in bad faith under paragraph 4(b)(i) of the Policy.
Applying
the two ADNDRC decisions above, the Complainant asserts that, it
is clear from the Respondent’s
conduct that,
the Respondent acquired the disputed domain name primarily for the
purpose of selling or otherwise transferring
the disputed domain
name registration to the Complainant for valuable consideration,
in excess of the Respondent’s
out-of-pocket
costs directly related to the disputed domain name.
The
Complainant submits that the Respondent deliberately registered
the disputed domain name in order to prevent the Complainant
from
reflecting its marks and services in a corresponding domain name,
under paragraph 4(b)(ii) of the Policy.
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Respondent
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Respondent
The Respondent submits that
there is already a definitive ruling on the disputed domain name
in John Swire & Sons Limited
v Lily Zhu (WIPO Case No.
D2001-1025), which was decided on 31 January 2002 (involving the
same lawyer as in the present case,
Ms. Rosita Y.M. Li). In that
case, the Panel found that the Complainant had not established its
case and dismissed the Complaint.
(a) Name is identical or
confusingly similar to a trademark or service mark in which the
complainant has rights
The Respondent asserts that, when it
registered the disputed domain name, it had not heard of the Swire
Group, and that it was
not aware of the existence of the
“太åﾏ¤â€ﾝ
trademark. Further, the
Respondent states that he had never received information about
either the Swire Group or the existence
of the “太åﾏ¤â€ﾝ
trademark.
The Respondent
rejects the Complainant’s assertion that the
use of the two characters “太â€ﾝ
and “åﾏ¤â€ﾝ
together does not constitute a
commonly used term in the Chinese language. The Respondent asserts
that “太åﾏ¤â€ﾝ
is a term that connotes
“attributesâ€ﾝ
or “qualitiesâ€ﾝ,
and is a commonly used term. According to the Modern Chinese
Dictionary, which was compiled by the Linguistics Institute’s
Dictionary Editorial Office in the Chinese Academy of Social
Studies, the meaning of the term “太åﾏ¤â€ﾝ
is “the most
ancient eraâ€ﾝ.
Other dictionaries have defined the phrase simply as “ancient
eraâ€ﾝ,
with a Chinese-English dictionary translating the term as
“remote antiquityâ€ﾝ.
The Respondent also submits that, a search on the term using the
search engine, www.google.com, reveals a large number of
results
(almost 205,000 hits), the majority of which bear the meaning of
“remote timesâ€ﾝ
or “ancient
eraâ€ﾝ,
further indicating that the term “太åﾏ¤â€ﾝ
is commonly-used. In support of
its contention, the Respondent highlights numerous uses of the
term in book titles, school names
and company names.
The
Respondent asserts that the Complainant, being a company which
operates on a global scale, should have been able to register
the
disputed domain name within the 2 years and 10 months that have
passed since the prior registration of the disputed domain
name
lapsed. The fact that the Complainant did not register the
disputed domain name indicates that, the Complainant is simply
seeking to reap the benefits of the Respondent’s
labour without expending any effort of its own. The Respondent
argues that, as the Complainant is an English company, the Chinese
name of the Complainant is not as important as its English
name,
and that, as the Complainant is already the registrant of various
English domain names in relation to the Swire Group,
the Chinese
domain name should be reserved for the Chinese people.
The
Respondent contends that, the Swire Group is not well known
outside of Hong Kong, and that few people know of the Swire
Group,
even in Mainland China. The Respondent submits that it was unaware
of the existence of the Swire Group, and that as
the
Respondent’s registration of the disputed
domain name was not for the purpose of using the disputed
domain
name in Hong Kong, the Complainant’s rights
will not be affected.
Apart from the decision of John Swire
& Sons Limited v Lily Zhu (WIPO Case No. D2001-1025), as
mentioned above, the Respondent
relies on four other cases, in
support of its contention that a reputable company cannot rely on
its trademarks or reputation
to deprive another individual or
company of its validly registered domain name.
The
Respondent submits that the decision in Google.com v Google.com.cn
(2003）贸仲域è£ﾁå—第0006åﾏ·
shows that a company cannot rely on its trademarks or reputation
to deprive another individual or company of its rights.
The
Respondent contends that google.com is the largest search engine
globally, and is second only to yahoo.com in terms of
the number
of hits per day. google.com receives over a million search
requests a day. In comparison, the Complainant’s
website receives a substantially smaller number of hits a day. In
terms of global importance and reputation, google.com and
the
Complainant’s website are incomparable.
Nevertheless, google.com’s complaint in
relation to the domain name <google.com.cn> was rejected.
The Respondent submits that the decision in QQ.com v
qq.com.cn (CIETAC Case No. CND0300003) similarly illustrates that
a company
cannot rely on its trademark or reputation to deprive
another individual or company of its rights. The Respondent
submits that
QQ.com is China’s most well known
instant messaging service, and that the company is also in the
enterprise
real-time communication and entertainment information
management business. The Respondent submits that, although QQ.com
is
reputable and receives many hits, QQ.com’s
complaint against qq.com.cn was also rejected.
In the case
of Paradox Security Systems Ltd. v. Paradox.com.cn (CIETAC Case
No. CND0200004), the Canadian company, Paradox Security
Systems
Ltd.’s complaint against paradox.com.cn was
similarly rejected.
In GM v Hummer.com.cn (CIETAC Case No.
CND0300015), GM’s complaint against
Hummer.com.cn was also rejected.
The term “Hummerâ€ﾝ
was registered by GM as a
trademark, and was the name of a brand of trucks manufactured by
GM. GM argued that because the “Hummerâ€ﾝ
trademark was well known
internationally, and that it had rights in the trademark. The
Respondent asserts that, although GM
was the world’s
largest company then, it could not deprive another individual or
company of its rights.
(b) Respondent has no rights or
legitimate interests in respect of the disputed domain name
The
Respondent submits that he has expended money, effort and time in
registering the disputed domain name. Accordingly, the
Respondent
asserts that he has rights and legitimate interests in the
disputed domain name. In particular, the Respondent relies
on
paragraphs 4(c)(i) & 4(c)(ii) of the Policy to demonstrate his
rights and legitimate interests in the disputed domain
name.
The
Respondent submits two reasons for registering the disputed domain
name. First, the Respondent previously owned the domain
name
eonlove.com and the Chinese name of eonlove.com was
“太åﾏ¤ä¹‹çˆ±â€ﾝ,
the Respondent registered the disputed domain name with the
intention of using it as part of the “Tai Gu
Love & Charity Webâ€ﾝ.
As the Chinese domain name system was not yet operational when the
Respondent registered the disputed domain name, and as
the
Respondent was a member of the Fortune Culture Reading Club, the
Respondent decided to re-direct visitors of his website
from the
disputed domain name to http://www.humanbliss.com.sg/index.asp.
Subsequently, visitors to the disputed domain name website were
directed to eonlove.com. eonlove.com would then be re-directed
to
the “Chinese Love Webâ€ﾝ
at
http://www.lovesino.com/cat/1.html.
The Respondent asserts that this chain of re-direction was already
in place before the Complaint was filed. The Respondent
contends
that he has used the disputed domain name, and that the disputed
domain name has acquired a certain reputation. The
Respondent
submits that, accordingly, it can be seen that the Respondent’s
objective in registering the
disputed domain name was not for
commercial gain, but to build up the “Tai Gu
Love & Charity Webâ€ﾝ.
The Respondent submits that registering the disputed domain name
was part of his plans to promote love, charity and care for
the
human race.
Second, the Respondent registered the disputed
domain name because the Respondent’s loved one
had a nickname
called “太åﾏ¤â€ﾝ,
and the Respondent’s loved one’s
e-mail address “taigu5@hotmail.comâ€ﾝ
also uses the term “太åﾏ¤â€ﾝ.
As “太åﾏ¤â€ﾝ
in hanyu pinyin is “taiguâ€ﾝ,
the Respondent submits that he had a special liking for the term
“taiguâ€ﾝ.
The Respondent submits that two e-mails from
“taigu5@hotmail.comâ€ﾝ
to the Respondent dated 28 March
2004 and 29 March 2004 prove the link between the Respondent and
his loved one, and that the
disputed domain name had been in use
and had become well known since the time the Respondent registered
the disputed domain
name.
The Respondent submits that the
disputed domain name was part of the “Tai Gu
Love & Charity Webâ€ﾝ,
with the objective of “eon loveâ€ﾝ
or enduring love. The Respondent
submits that he would never use the disputed domain name for
commercial gain. The Respondent
further submits that, from the
time the disputed domain name was registered, and well before the
Complaint was filed, the disputed
domain name was already in use.
The Respondent contends that as the disputed domain name was used
for non-profit & non-commercial
purposes, and had gained a
certain reputation, the Respondent had rights and legitimate
interests in the disputed domain name.
(c) Respondent
registered and has used the domain name in bad faith
The
Respondent relies on paragraphs 4(b) and 4(c)(iii) of the Policy
to show that it did not register and use the disputed domain
name
in bad faith. The Respondent submits that it had never, prior to
the Complaint being filed, made any contact with the
Complainant.
Accordingly, the Complainant’s assertion that
the Respondent had previously been in contact
with the Complainant
is incorrect, and the contents of the correspondence are without
truthful basis. The Respondent submits
that he does not attest to
the validity of the correspondence. The Respondent contends that
the party who formerly held itself
out as having the authority to
act on behalf of the Respondent in its correspondence with the
Complainant may have been a)
a party attempting to cause trouble;
b) a domain name resale broker; c) a party who was related to the
previous case of John
Swire & Sons Limited v Lily Zhu (WIPO
Case No. D2001-1025); d) a party that missed the opportunity to
register the disputed
domain name and was therefore seeking
revenge; e) an invented and non-existent person; f) a person
related to the Complainant;
or g) a person seeking to take
advantage of the situation. The Respondent submits that the
Complainant has been unable to adduce
evidence linking the
Respondent with the person purporting to have the authority to act
on behalf of the Respondent.
The Respondent contends that
he sent e-mails to the persons whom the Complainant alleged had
offered to sell the disputed domain
name, at the e-mail addresses
of “5y@sina.comâ€ﾝ
and “on888@yahoo.comâ€ﾝ.
The Respondent submits that in those e-mails, the Respondent
denied having any relationship with those persons who purported
to
have the authority to act on the respondent’s
behalf. The Respondent further submits that he has never
procured
the assistance of a third party in relation to domain name
matters. These e-mails were also sent to “hkiac@adndrc.orgâ€ﾝ
and to the Complainant’s
authorized representative at the e-mail address of
“rosita.li@jsm.comâ€ﾝ.
The
Respondent submits that he does not have the intention of selling,
renting, or transferring the disputed domain name. The
Respondent
submits that he intends to use the disputed domain name for his
own purposes, especially since the disputed domain
name is the
Respondent’s only domain name in Chinese. The
Respondent submits that he has already sent an
e-mail to the
Complainant’s authorized representative at the
e-mail address of “rosita.li@jsm.comâ€ﾝ,
the person who purported to have the authority to act on his
behalf at the e-mail addresses of “5y@sina.comâ€ﾝ
and “on888@yahoo.comâ€ﾝ
and to ADNDRC at the e-mail
address of “hkiac@adndrc.orgâ€ﾝ.
The
Respondent submits that the disputed domain name was first
registered on 10 November 2000. However, as the original
registrant
forgot to renew its registration upon expiry, its
rights in the disputed domain name lapsed. Subsequently, the
disputed domain
name was re-registered on 29 September 2003. The
Respondent contends that it is possible that the alleged offer to
sell the
disputed domain name to the Complainant was made by
someone who failed to register the disputed domain name, and that
this
person was seeking revenge by sending out malicious e-mails.
The Respondent submits that, the phrase “太åﾏ¤â€ﾝ
is popular, and, has led to
great interest amongst individuals and companies in registering
the disputed domain name. The Respondent
submits that a search on
“www.google.comâ€ﾝ
will easily locate the previous
case of John Swire & Sons Limited v Lily Zhu (WIPO Case No.
D2001-1025), as well as the
Complainant’s
authorized representative’s name, Rosita Y.M.
Li. A search for the name
“Rosita Y.M. Liâ€ﾝ
on “www.google.comâ€ﾝ
will reveal her e-mail address
and other contact details. The Respondent contends that the ease
of finding Rosita Y.M. Li’s
e-mail address
means that it is not difficult for anyone to write to Rosita Y.M.
Li, to discuss matters relating to the disputed
domain name. The
Respondent submits that he does not know and would not know of the
contents of any correspondence between
Rosita Y.M. Li and any
third parties prior to his receiving notice of this
Complaint.
The Respondent argues that, since the disputed
domain name is not being used in Hong Kong and is not being used
for commercial
gain, and is not “太åﾏ¤é›†å›¢.comâ€ﾝ
or “太åﾏ¤å…¬åﾏ¸.comâ€ﾝ,
the Respondent’s use of the disputed domain
name would not affect the Complainant’s
business.
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Findings
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Identical
/ Confusingly Similar
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Paragraph 4(a) of the Policy sets out the
criteria upon which the findings of the Panel shall be
based.
Identical/Confusingly Similar
Issues:1. Does John
Swire & Sons Limited have rights in the “太åﾏ¤â€ﾝ
trademark?2. Is the disputed
domain name, owned by the Respondent, identical or confusingly
similar to the “太åﾏ¤â€ﾝ
trademark?
Paragraph
4(a)(i) of the Policy provides that the Complainant must show that
the disputed domain name is identical or confusingly
similar to a
trademark or service mark in which the Complainant has rights.
In
the earlier case of John Swire & Sons Limited v Lily Zhu (WIPO
Case No. D2001-1025), the Complainant successfully established
that the domain name “太åﾏ¤.comâ€ﾝ
was identical or confusingly
similar to the trademark in which the Complainant had rights.
Since the Complainant in this case
is the same party as in that
earlier case, and their trademark rights in “太åﾏ¤â€ﾝ
have not lapsed, the Panel is
satisfied that the relevant Internet-using public would associate
the “太åﾏ¤â€ﾝ
mark exclusively with the
Complainant.
The Panel notes that the Complainant has
adduced extensive evidence to show that it has rights in the
“太åﾏ¤â€ﾝ
trademark. The Panel observes
that the Complainant has registered the “太åﾏ¤â€ﾝ
trademark in seven
jurisdictions, and evidence of the registration certificates has
been provided in Annex B to the Complaint.
The Panel notes that a
total of 28 domain names, including 太åﾏ¤.net,
have been registered by John Swire & Sons (HK) Limited, and a
list of these domain names have been provided
in Annex C to the
Complaint. Finally, the Swire Group dates its history back to
1816, and currently employs over 120,000 employees
worldwide. The
Panel also notes that the Swire Group of companies is particularly
active in the Asia Pacific region, and that
the Complainant has
adduced evidence of this in Annex D of the Complaint, which
exhibits copies of fact sheets setting out
the information and
businesses of the Complainant and the Complainant’s
group. Accordingly, the Panel is
satisfied that the Complainant
has rights in the “太åﾏ¤â€ﾝ
trademark.
The
Complainant contends that the disputed domain name has
incorporated the Complainant’s mark in its
entirety.
The Panel notes that the only difference between
the Complainant’s mark and the disputed domain
name is the
additional “.comâ€ﾝ
in the disputed domain name.
However, the Panel is of the view that “.comâ€ﾝ
only refers to a
business-related domain name, and the additional “.comâ€ﾝ
in the disputed domain name
cannot function to distinguish the disputed domain name from the
Complainant’s
Mark. This follows from the
ADNDRC Decision of www.hktdc.com (DE-0200002).
Accordingly,
the Panel concludes that the disputed domain name is identical to
the Complainant’s mark.
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Rights
and Legitimate Interests
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Rights and Legitimate Interests
Issues:1.
Does the Respondent have any rights or legitimate interests in
respect of the disputed domain name?2. Has the Respondent
adduced
sufficient evidence to show that he has rights or legitimate
interests in respect of the disputed domain name?3. How
substantial must a right or interest be in order to satisfy
paragraph 4(a)(ii) of the policy?
Paragraph 4(a)(ii)
provides that the Complainant must show that the Respondent does
not have rights or legitimate interests
in respect of the disputed
domain name.
Paragraph 4(c) provides that the Respondent
can demonstrate his rights to, and legitimate interests in, the
disputed domain
name:
“Any of the
following circumstances, in particular but without limitation, if
found by the Panel to be proved
based on its evaluation of all
evidence presented, shall demonstrate your rights or legitimate
interests to the domain name
for purposes of Paragraph
4(a)(ii):
(i) before any notice to you of the dispute, your
use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona
fide offering of goods or services; or
(ii) you (as an
individual, business, or other organization) have been commonly
known by the domain name, even if you have acquired
no trademark
or service mark rights; or
(iii) you are making a legitimate
non-commercial 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.â€ﾝ
The
Complainant contends that the Respondent has no rights or
legitimate interests in the disputed domain name because the
Respondent’s name is different from the
disputed domain name and the Respondent is not commonly known by
the disputed domain name.
The Respondent relies on
paragraphs 4(c)(i), 4(c)(ii) and 4(c)(iii) to assert that he has
rights and legitimate interests in
the disputed domain name.
The
Panel notes that the Respondent who was identified in the
Complaint was a person called “Qiu Shengjieâ€ﾝ
(as determined from the WHOIS
search of 14 October 2003). However, the registrant was
subsequently changed to a person called
“Chen
Qingruiâ€ﾝ
(as determined from the WHOIS
search of 13 January 2004). Further, on the day the Complaint was
filed, the registrant of the
disputed domain name was again
changed to a person called “Chiu Tien Fuâ€ﾝ,
who is the current Respondent, and who submitted the Response.
Therefore, at the time the Complaint was submitted, the
Complainant was not in fact addressing the current Respondent.
Nevertheless, it is submitted that this should not affect the
Complainant’s assertion as the Respondent’s
name is different from the disputed domain
name and the Respondent
is not commonly known by the disputed domain name.
The
Respondent relies on paragraph 4(c)(i) of the Policy which allows
the Respondent to assert his rights or legitimate interests
in the
disputed domain name if the Respondent can show that before any
notice to him of the dispute, the Respondent has been
using, or
has made demonstrable preparations to use, the disputed domain
name or a name corresponding to the disputed domain
name, in
connection with a bona fide offering of goods or services. The
Respondent submits that that he has been using the
disputed domain
name in connection with a bona fide offering of goods and services
since the day he registered the disputed
domain name, and before
the Complaint was filed.
The Panel is not satisfied that,
the Respondent has shown that, before he was notified of the
Complaint, the Respondent had
been using the disputed domain name
in connection with a bona fide offering of goods or services. The
Panel notes that the
Complainant filed the Complaint on 23
February 2004, on the same day the Respondent registered the
disputed domain name. The
Respondent was notified of the Complaint
on 28 February 2004. Accordingly, when the Respondent was notified
of the Complaint,
only 5 days had elapsed since the Respondent
registered the disputed domain name. The Panel is of the view that
the 5-day period
between which the Respondent became the
registrant and the day he was notified of the Complaint, is too
short a period for
the Respondent to prove that he had been using
the disputed domain name in connection with a bona fide offering
of goods and
services. Further, the Panel notes that
“太åﾏ¤.comâ€ﾝ
is currently inactive, and that
the Respondent has not adduced any evidence to support his
contention that the disputed domain
name was in use or that he was
preparing to use the disputed domain name in connection with a
bona fide offering of goods or
services.
Accordingly, the Panel
concludes that the Respondent cannot rely on paragraph 4(c)(i) of
the Policy to assert his rights and
legitimate interests in the
disputed domain name.
The Respondent relies on Article
4(c)(ii) of the Policy which allows the Respondent to assert his
rights or legitimate interests
in the disputed domain name if the
Respondent can show that he has been commonly known by the
disputed domain name, even if
the Respondent has not acquired any
trademark or service mark rights. The Respondent submits that the
disputed domain name
is well known.
The Panel is not
satisfied that the Respondent has shown that he himself, as an
individual, is well known by the disputed domain
name. The
Respondent makes a bare assertion that the disputed domain name is
well known. The Panel further notes that the Respondent
only
became the registrant of the disputed domain name on the very same
day the Complaint was filed with ADNDRC and that when
the
Respondent was notified of the Complaint, only 5 days had elapsed
since the Respondent became the registrant of the disputed
domain
name. Accordingly, it is not possible for the Respondent to have
become well known by the disputed domain name, or,
for the
disputed domain name to become well known, within such a short
period of time. The Panel concludes that the Respondent
has not
shown that he has rights or legitimate interests in accordance
with paragraph 4(c)(ii) of the Policy.
The Respondent also
appears to rely on paragraph 4(c)(iii) to assert his rights or
legitimate interests in the disputed domain
name. The Respondent
submits that he registered the disputed domain name for two
reasons.
First, the Respondent previously owned the domain
name “eonlove.comâ€ﾝ.
In connection with this, he registered the disputed domain name to
form part of the “Tai Gu Love and Charity
Webâ€ﾝ
or “太
åﾏ¤
爱 心 慈
å–„ 网 ç«™â€ﾝ.
However, because Chinese characters could not be displayed as a
website address at the material time, the Respondent re-directed
the disputed domain name to a website called
http://www.humanbliss.com.sg/index.asp.
Various other re-directions were involved until, eventually, the
website http://www.lovesino.com/cat/1.html
would be displayed. The Respondent asserts that the purpose of his
website is to promote love, charity and care for the human
race.
Second, the Respondent’s loved one
has a nickname called “太åﾏ¤â€ﾝ
and therefore, the Respondent
likes the term “太åﾏ¤â€ﾝ
immensely.
The Respondent
submits that he had no intention of using the disputed domain name
for a commercial purpose. As noted above,
the website
“太åﾏ¤.comâ€ﾝ
is currently inactive.
Accordingly, it is not possible for the Panel to confirm
independently if the use of the website prior
to the dispute was
legitimate and non-commercial. The Panel is of the view that,
although the Respondent has annexed e-mails
from
“taigu5@hotmail.comâ€ﾝ
and “huanganle@post.comâ€ﾝ
to prove that the disputed
domain name was operational within a week of being registered and
is being used primarily to promote
love, charity and care for the
human race, such e-mails are not good evidence, particularly since
these e-mails are not from
independent sources, and were sent only
after the Complaint was filed.
The Panel is of the view
that the reasons given by the Respondent as to why he registered
the disputed domain name to be far-fetched
and insubstantial. The
Respondent’s second reason for registering the
disputed domain name is that his loved
one is nicknamed
“太åﾏ¤â€ﾝ.
The Panel is of the view that such a reason is not a legitimate
reason for registering the disputed domain name, and is probably
an irrelevant reason. Accordingly, the Panel finds that the
Respondent cannot rely on Paragraph 4(c)(iii) of the Policy to
assert his rights and legitimate interests in the disputed domain
name.
For the above reasons, the Panel concludes that the
Respondent does not have any rights or legitimate interests in the
disputed
domain name.
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Bad
Faith
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Bad Faith
Issues:1. Was the disputed
domain name registered and used in bad faith?
Paragraph
4(a)(iii) of the Policy provides that the Complainant must show
that the Respondent registered and used the disputed
domain name
in bad faith.
Paragraph 4(b) of the Policy specifies four
circumstances, in particular but without limitation, which shall
be evidence of
the registration and use of the disputed domain
name in bad faith:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for
the purpose of selling,
renting, or otherwise transferring the
domain name registration to the complainant who is the owner of
the trademark or service
mark or to a competitor of that
complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly
related to the domain
name; or
(ii) you have registered the domain name in order to
prevent the owner of the trademark or service mark from reflecting
the
mark in a corresponding domain name, provided that you have
engaged in a pattern of such conduct; or
(iii) you have
registered the domain name primarily for the purpose of disrupting
the business of a competitor; or
(iv) by using the domain name,
you have intentionally attempted to attract, for commercial gain,
Internet users to your web
site or other on-line location, by
creating a likelihood of confusion with the complainant’s
mark as to
the source, sponsorship, affiliation, or endorsement of
your web site or location or of a product or service on your web
site
or location.
The Complainant alleges that the
Respondent registered and used the disputed domain name in bad
faith. The Complainant relies
on paragraphs 4(b)(i) and 4(b)(ii)
of the Policy to prove that the Respondent registered and used the
disputed domain name
in bad faith.
First, the Complainant
alleges that the Respondent registered the disputed domain name
for the sole purpose of selling, renting
or otherwise transferring
the disputed domain name registration for profits. The Complainant
submitted those facts relating
to the alleged offer to sell the
disputed domain name set out under the Complainant’s
contentions. In support
of its contentions, the Complainant
adduces a series of e-mails evidencing the correspondence between
the Complainant and the
authorised representative of the
Respondent, Henry.
Second, the Complainant submits that the
Respondent deliberately registered the disputed domain name in
order to prevent the
Complainant from reflecting its marks and
services in a corresponding domain name.
The Respondent
submits that the e-mail correspondence between the Complainant and
Henry were unauthorized offers. He denies
having any association
with Henry or any other third party in relation to domain name
matters. The Respondent asserts that
he did not have the intention
of selling, renting or transferring the disputed domain name.
Having reviewed the relevant correspondence between the
Complainant and Henry, the Panel is satisfied that Henry was
indeed
the authorised representative of the Respondent. The Panel
finds the e-mail dated 20 February 2004 from the Complainant’s
authorised representative to the Respondent, inquiring whether
Henry was authorised to act on the Respondent’s
behalf, especially telling. The Panel concludes that, since the
Respondent failed to respond to this particular e-mail, and
has
not denied that Henry was his authorised representative in the
sale of the disputed domain name, Henry was indeed the authorised
representative of the Respondent. The Panel is also ready to infer
that Henry was in fact the Respondent’s
authorised representative from the fact that the reply to the
e-mail dated 20 February 2004 was from Henry himself.
From
the chain of correspondence between the authorised representative
of Complainant and the authorised representative of the
Respondent, which indicates strongly that the authorised
representative of the Respondent Henry was trying to sell the
disputed
domain name to the Complainant, the Panel is satisfied
that the Respondent had registered the disputed domain name
primarily
for the purpose of selling or transferring the disputed
domain name registration to the Complainant, who is the owner of
the
“太åﾏ¤â€ﾝ
trademark, for valuable
consideration in excess of his documented out-of-pocket costs
directly related to the domain name. Having
regard to the ADNDRC
Decisions of www.hktdc.com (DE-0200002) and
www.raineandhornecommercial.com (DE-0200006), the Panel is
of the
view that the offer price of US$100,000 for the disputed domain
name is clear evidence that the Respondent registered
and used the
disputed domain name in bad faith.
The Panel is also
persuaded by authorities which have interpreted the terminology
used in paragraph 4(a)(iii) and 4(b) of the
Policy widely. In
particular, there are authorities which have found that “being
used in bad faithâ€ﾝ
includes inactivity or doing
nothing with the disputed domain name. For instance, in the WIPO
Decision of Telstra Corporation
Limited v Nuclear Marshmallows
(D2000-0003), the Panel found that the passive holding of a domain
name amounts to using the
domain name in bad faith. In view of the
fact that the disputed domain name is currently inactive, and that
the Respondent
has failed to adduce any evidence of use of the
disputed domain name as a website, the Panel considers that such
inactivity
of the disputed domain name, together with the offer to
sell the disputed domain name, amounts to “usingâ€ﾝ
the disputed domain name in bad
faith.
Accordingly, the Panel concludes that the Respondent
registered and used the disputed domain name in bad faith.
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