WIPO Domain Name Decision D2001-1305 for 西铁城.com

page 1 WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Citizen Watch (China) Co., Ltd. v. Cheng Zhi Gang Case No. D2001-1305 1. The Parties The Complainant is Citizen Watch (China) Co., Ltd. of Tian Zhu Lu 7, Tian Wei Two-Jie, Tian Zhu Kong Gang Gong Ye Qu, Shun Yi Qu, Beijing, 101312, China. The Represented by Deacons, Solicitors & Notaries, Alexandra House, Central, HongKong SAR, China. The Respondent is Cheng Zhi Gang, a Chinese citizen. His address is He Xi Qu, XiaoHai Di, Tianjin, 300350, China. Respondent is not represented. 2. The Domain Name and Registrar The domain name with which this dispute is concerned is . The Registrar with which the domain name is currently registered is Melbourne IT Ltd.,of Level 2, 120 King Street, Melbourne Victoria 3000, Australia. 3. Procedural History On October 26 and 29, 2001, the Complainant submitted its Complaint through e-mailand hardcopy, respectively, with the required filing fee for a single-member panel, toWorld Intellectual Property Organization Arbitration and Mediation Center ( "WIPOCenter"), in accordance with the Uniform Domain Name Dispute Resolution Policy (the"Policy") adopted by the Internet Corporation for Assigned Names and Numbers("ICANN") on August 26, 1999, the Rules for Uniform Domain Name DisputeResolution Policy (the "Rules"), and WIPO Supplemental Rules for Uniform DomainName Dispute Resolution Policy ("WIPO Supplemental Rules"). page 2 On November 2, 2001, WIPO Center sent via email to the Complainant an"Acknowledgement of Receipt of Complaint". On November 5, 2001, WIPO Center sent a "Request for Registrar Verification" viaemail to the Registrar requesting, confirmation that the Registrar had received a copy ofthe Complaint; that the disputed domain name is registered with it; that the Respondentis the current registrant of such the domain name; and full contact details availableunder the WHOIS database; that the Policy applies to the Domain Name; and, thecurrent status of the domain name. On November 8, 2001, the Registrar made the replythereto. On November 12, 2001, WIPO Center completed a "Formal Requirements ComplianceChecklist". On November 12, 2001, WIPO Center sent the "Notification of Complaint andCommencement of Administrative Proceedings", together with a copy of the Complaintvia e-mail and facsimile and by courier to the Respondent, and therefore to theadministrative, technical and billing contacts. A copy has also been communicated toICANN and to the Registrar, via e-mail. The Notification indicated thatDecember 2, 2001, was the deadline to submit a Response to the Complaint accordingto the requirements described in Paragraph 5(a) of the Rules. On December 3, 2001, WIPO Center sent the “Notification of Respondent Default” tothe Respondent. On December 18, 2001, WIPO Center sent to the Complainant and the Respondent a"Notification of Appointment of Administrative Panel and Projected Decision Date",which appointed Professor Hong Xue as the panelist of the Single-Member Panel. ThePanelist submitted a “Statement of Acceptance and Declaration of Impartiality andIndependence”, and scheduling January 1, 2002, as the date for issuance of the Paneldecision, notifying the above pursuant to Paragraphs 6(f) and 15(b) of the Rules. On December 18, 2001, WIPO Center transferred the case file to the AdministrativePanel, with copy of the file transmission letter being sent to the Complainant and theRespondent. This Panel agrees with WIPO Center assessment and considers that the Complaint wasproperly notified to the registered domain-name holder, the technical contact, and theadministrative contact as provided for in Paragraph 2(a) of the Rules and that formalcompliance within the requirements of the Policy, the Rules, and Supplemental Ruleswas met. The Panel has not received any further requests from the Complainant or theRespondent regarding other submissions, waivers or extensions of deadlines. There isno need as an exceptional matter, to hold any in-person hearings as necessary fordeciding the Complaint, as provided for in Paragraphs 12 and 13 of the Rules.Therefore, the Panel has decided to proceed under the customary expedited naturecontemplated for this type of domain name dispute proceeding. The language of the proceeding is English, as being the language of the Domain NameRegistration and Service Agreement, pursuant to Paragraph 11(a) of the Rules, and alsoin consideration of the fact that there is no express agreement to the contrary by the page 3 parties. In addition, pursuant to Paragraph 10 (b) of the Rules and in consideration ofthe circumstances of this administrative Proceeding, the Panel, for the purpose to ensurethat each Party is given a fair opportunity to present its case, takes into account theevidential materials provided in Chinese. 4. Factual Background 4.1 The Complainant and The Trademark The Complainant was established in China on August 1, 1994. Currently, Citizen Watch Co., Ltd. has about 17,530 employees and a total current assetof US$2,584,979,000. It has a total of about 25 branches in Arabia, Austria, Brazil,Canada, China, England, France, Germany, Hong Kong, India, Italy, Mexico, NewZealand, Panama, Spain, Switzerland, Taiwan, Thailand, the United States of America,and other countries and regions. Citizen Watch Co., Ltd. registered trademark “CITIZEN” on March 25, 1980 with theTrademark Office of the State Administration for Industry and Commerce of thePeople’s Republic of China. This trademark has been renewed and is valid until today. Citizen Watch Co., Ltd. registered the trademark “” (“CITIZEN” in NormalChinese Characters) on March 25, 1980 and the trademark “” (“CITIZEN” inSimplified Chinese Characters) on September 30, 1988, with the Trademark Office ofthe State Administration for Industry and Commerce of the People’s Republic of China. Citizen Watch Co., Ltd. has also used and promoted its “” (“CITIZEN” inChinese characters) trademark in the Chinese-speaking world, in particular withclocks/watches. In the “Nationwide Major Concern Trademark Protection List” promulgated by thePeople’s Republic of the Trademark Office of China State Administration for Industryand Commerce in 1999 and 2000, the marks “” and “CITIZEN” had been listedas the foreign marks of the major concern protection status. 4.2 The Respondent and The Domain Name According to the WHOIS database, the registration date of the domain name was on November 30, 2000 and the expiry date is on May 9, 2002. Theregistrant of the domain name is now and has always been Cheng Zhi Gang. Both the Complaint and the Reply from Registrar in respect of WIPO Center’s Requestfor Registrar Verification stated that the domain name was registered onNovember 30, 2000 and expired on November 9, 2001. The Panel, however, foundthrough Registrar’s WHOIS database on December 25, 2001 that the current status ofthe domain name is active and the registration for the domain namewon’t expire until May 9, 2002. The Respondent did not submit the Response in the Proceeding. No information otherthan the name and address is known in respect of Respondent. page 4 5. Parties’ Contentions 5.1 Complainant contentions may be briefly summarised as follows: “” is its famous mark in the Chinese-speaking world especially China. On November 30, 2000, the Respondent registered the domain name (“CITIZEN” in Chinese characters) under his own name. This domain name is in all material aspects identical to the trademark and name of theComplainant. It is noted from the Technical Contact’s address stated in the Whois search datedFebruary 1, 2001 that the Technical Contact is based in China and therefore must beaware that “” is a famous mark in China. Further the Respondent is not alicensee of the Complainant, nor is the Respondent otherwise authorized to use theComplainant’s mark. The Complainant is not aware of any other entity who may usethe mark “” in a domain name legitimately in conducting its own businesswithout infringing the rights of the Complainant. The Complainant is aware of no connection whatsoever between the Respondent andthe Complainant’s trademark “”, nor any reason why the Respondent has everbeen legitimately known or identified in any way by that mark. The Respondent has norights or legitimate interest in respect of the domain name . Further, the Respondent has not developed a website using the domain name, and the domain name was unable to resolve into a validIP Address. Deacons, on behalf of the Complainant, sent a letter by e-mail to the Respondent onMarch 2, 2001 requested the Respondent to transfer the disputed domain name to theComplainant. As there was no reply from the Respondent, the same letter was sent bycourier and by fax to the Respondent on April 6, 2001. Subsequent to this letter,several telephone calls were made to the Respondent but he still could not be reached. On May 27, 29 and 31 and on June 1, 2001, Deacons, on behalf of the Complainant,received 5 e-mails in Chinese from liurunxia@. These letters were signedunder “Tianjin”, “Tianjin Xiao Cheng” and “Xiao Cheng”. Tianjin is the city where theRespondent resides. “Xiao Cheng” means “Little Cheng”, which was a customary waythe Respondent called himself. According to the e-mail dated May 29, 2001, theRespondent had asked the Complainant to pay him US$500,000 in order for him totransfer the domain name to the Complainant. The Respondent claimedto have registered the domain name as a means of protest against theJapanese because he hated Japanese companies. The Respondent further stated that healso owned other Japanese companies’ domain names which he was willing to transferif sufficient money was paid to him. The Respondent registered and used the domain name in bad faith forthe following reasons: (a) The Respondent has registered or acquired the domain name primarily for page 5 the purpose of selling the domain name registration to the Complainant asthe owner of the “” trademark for a valuable consideration in excessof the out-of-pocket costs directly related to the domain name. Likewise,the Respondent would expect a profit from the sale of backto its trademark owner. (b) The Respondent has registered or acquired the domain name as a means ofprotest against the Japanese because he claims that he hates Japanesecompanies. (c) The Respondent has engaged in a pattern of registering trademarks orservice marks as domain names including the domain name at issue in orderto prevent the owners of such marks from registering the domain names toreflect their marks. (d) It follows therefore that the Respondent has no intention to use ordemonstrate preparations to use the domain name or a name correspondingto a domain name in connection with a bona fide offering of goods andservices. 5.2 Respondent did not file any Response. 6. Applicable Dispute 6.1 This dispute is one to which the Policy applies. By registering the domain name,Respondent accepts the dispute resolution Policy adopted by the Registrar. 6.2 To succeed in its Complaint, Complainant must show that each of the conditionsof Paragraph 4(a) of the Policy are satisfied, namely that: (i) the domain name is identical or confusingly similar to a trademark orservice mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the domain name;and (iii) the domain name has been registered and is being used in bad faith. 7. Discussion and Findings 7.1 Identical or Confusingly Similar Trademarks Pursuant to Paragraph 4(a) of the Policy, Complainant must prove that the domainname is identical or confusingly similar to a trademark or service mark in which theComplainant has rights. In line with such provision, the Complainant must prove two aspects, i.e. it enjoys thetrademark right; and the domain name in question is identical with or similar to itstrademark or service mark. page 6 The Panel, in the first place, holds that the domain name registered by Respondent isconfusingly similar to the trademark “”. The Panel, in the second place, holds that the Complainant enjoys the right over thetrademark “”, though it is not the trademark registrant in China. The Panel notices that the Complaint mentioned both the Complainant “Citizen Watch(China) Co., Ltd.” and another company “Citizen Tokei Kabushiki Kaisha” (also knownas Citizen Watch Co., Ltd.). The Complainant provided its business license as theevidence (See Annex 4 to the Complaint; it is in Chinese and no English translation). The Panel finds from the business license of the Complainant that it was a “Chinese-Foreign Joint Venture” approved by the State Administration forIndustry and Commerce of the People’s Republic of China on August 10, 1994. TheComplainant and Citizen Tokei Kabushiki Kaisha (also known as Citizen Watch Co.,Ltd.) are two independent enterprises. Citizen Tokei Kabushiki Kaisha (also known asCitizen Watch Co., Ltd.) was the registrant of the trademarks “Citizen”, “” and“” in China. Although the Complainant is not the registrant of the trademark “” in China, thePanel holds that there should be a relationship of trademark licensing between theComplainant and the trademark registrant Citizen Tokei Kabushiki Kaisha (also knownas Citizen Watch Co., Ltd.). Under the Trademark Law of People’s Republic of China,any trademark registrant may, by signing a trademark license agreement, authorize otherpersons to use the registered trademark. A trademark license agreement does not needto be approved by the competent authority of China. The Complainant was established with the authorization and investment of CitizenTokei Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.), and the Complainant,as the Chinese subsidiary, has close connection with Citizen Tokei Kabushiki Kaisha(also known as Citizen Watch Co., Ltd.). The Panel also notices that the letter by e-mailsent by Deacons to the Respondent dated March 2, 2001 was on behalf of both “CitizenWatch Co., Ltd.” and the Complainant (See Annex 14 of the Complaint; the letter is inChinese and no English translation), which shows that the Complainant was authorizedto stand for “Citizen Watch Co., Ltd.” in respect of trademark protection matters inChina. Based on these fact, it is fair to presume that the Complainant has been licensedin Chinese market to use and protect the registered trademark “” for CitizenTokei Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.). The Panel therefore holds that the domain name in question is confusingly similar to thetrademark in which the Complainant has the right. 7.2 Legitimate Right or Interest The Complainant contended that the Respondent had no legitimate right or interest.Where, as here, the Complainant has raised a prime facie presumption of theRespondent's lack of such right or interest, and Respondent has failed to rebut thatpresumption, the Panel is entitled to accept Complainant's assertion. As provided for byParagraph 14 of the Rules, the Panel may draw such inference from the Respondent’sdefault, as it considers appropriate. The Panel therefore finds that Complainant has established that Respondent has no page 7 legitimate right or interest in the domain name. 7.3 Use and Registration in Bad Faith A non-exhaustive list of what constitutes bad faith registration and use is set out inParagraph 4(b) of the Policy. The Complainant basically relies upon 4(b)(i) and (ii),which read as follows: For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular, butwithout limitation, if found by the Panel to be present, shall be evidence of theregistration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or therespondent has acquired the domain name primarily for the purpose ofselling, renting, or otherwise transferring the domain name registration tothe complainant who is the owner of the trademark or service mark or to acompetitor of that complainant, for valuable consideration in excess of therespondent’s documented out-of-pocket costs directly related to the domainname; or (ii) the respondent has registered the domain name in order to prevent theowner of the trademark or service mark from reflecting the mark in acorresponding domain name, provided that the respondent has engaged in apattern of such conduct. The Panel finds that, in the “Nationwide Major Concern Trademark Protection List”promulgated by the Trademark Office of the State Administration for Industry andCommerce of the People’s Republic of China in 1999 and 2000, the marks “”and “CITIZEN” had been listed as the foreign marks of the major concern protectionstatus. The various promotional materials provided by the Complainant also show thatthe trademarks “Citizen” and “” had been widely promoted in the world marketincluding China. The Respondent of this case registered the domain name but has madeno active use of it. The second-level of the domain name is famous in China and, as thePanel has already found, the Respondent has no rights or legitimate interests in respectof it. Considering the emails received by Deacons, on behalf of the Complainant onMay 27, 9 and 31 and June 1, 2001 from the Respondent, the Panel holds that theRespondent registered the domain name with the knowledge that “” was thetrademark of the Japanese company (“Citizen Watch Co., Ltd.”), and the Respondentregistered such domain name for the purpose of protesting against the policies ofJapanese government, rather than for his own use. According to the e-mail dated May 29, 2001, the Respondent had asked theComplainant to pay him US$500,000 in order for him to transfer the domain name to the Complainant, and stated that “although the Japanese are goodbusinessmen, my price will not change.” In consideration of such request from the Respondent and other circumstances, thePanel holds that the Respondent had the bad faith for registering the domain name page 8 primarily for the purpose of selling the domain name registration to the Complainant asthe right owner of the “” trademark for a valuable consideration in excess of theout-of-pocket costs directly related to the domain name. In the e-mail dated May 29, 2001, the Respondent stated, “I have some other domainnames (besides “.com”); (and) if the Japanese want them, please contact me.”The Complainant therefore contended that the Respondent had the bad faith forengaging in a pattern of registering trademarks or service marks as domain namesincluding the domain name at issue in order to prevent the owners of such marks fromregistering the domain names to reflect their marks. However, the Complainant failed toprovide any evidence to prove that the Respondent had engaged such a pattern ofconduct. The Panel, therefore, does not regard that the Respondent had the bad fait ofthat type. The Panel therefore concludes that the Respondent had the bad faith provided inParagraph 4(a)(iii) of the Policy. 8. Decision In light of the foregoing findings, namely that the domain name is confusingly similarto a trademark in which the Complainant has rights and that the Respondent has norights or legitimate interests in respect of the domain name and that the domain namewas registered in bad faith, the Complaint succeeds. Pursuant to Paragraphs 4(i) of the Policy and Paragraph 15 of the Rule, the Panel directsthat the domain name be transferred to the Complainant. _____________________________ Hong Xue Sole Panelist Dated: January 1, 2002

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