WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Morgan, Société Anonyme v. Chin Shyr Tarng Watch Industrial Co., Ltd.
Case No. D2002-0121
1. The Parties
The Complainant in this administrative proceeding is Morgan, Société Anonyme, head office 10, Rue Etienne Marcel, 75002 Paris, France; principal place of business 36/38, Ave. Paul V. Couturier, 93120 La Courneuve, France.
Complainant�s authorized representative in this administrative proceeding is Cabinet Plasseraud, 84, Rue D'Amsterdam, 75440 Paris, Cedex 09, France.
The Respondent is Chin Shyr Tarng Watch Industrial Co, Ltd. 1Fl., No.11, Alley 14, Lane 82, Lungchiuan St., Banchiau City, Taipei, Taiwan 220, Province of China.
2. The Domain Name and Registrar
The Domain Name the subject of this Complaint is .
The Registrar of the Domain Name is BulkRegister, Inc.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on February 6, 2002 and in hard copy on February 7, 2002. Complainant states that a copy of the Complaint was sent to Respondent by DHL courier on February 6, 2002; and a copy was sent to the concerned Registrar by DHL courier on February 6, 2002.
3.2. On February 19, 2002, verification was received from the Registrar, BulkRegister Inc., that the name of the Registrant of the disputed Domain Name is: Chin Shyr Tarng Watch Industrial Co, Ltd. 1Fl., No.11, Alley 14, Lane 82, Lungchiuan St., Banchiau City, Taipei, Taiwan 220, Province of China. The Administrative Contact is: Fen Hsia Huang, Chin Shyr Tarng Watch Industrial Co, Ltd. 1Fl., No.11, Alley 14, Lane 82, Lungchiuan St., Banchiau City, Taipei, Taiwan 220, Province of China. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the disputed Domain Name.
3.3. On February 19, 2002, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
3.4. On February 20, 2002 WIPO Center made a printout of the webpage obtained by accessing the website corresponding to the disputed Domain Name.
3.5. On February 20, 2002, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center to Respondent and Respondent's Technical Contact by post/courier (with enclosures) and email (without attachments), and to Respondent's Administrative Contact at its stated fax number which was not reachable. The Formal Notification was copied to Complainant, to ICANN and to the Registrar by email.
3.6. No Response was received from Respondent by the due date of March 12, 2002 and a Notification of Respondent Default was sent to Complainant, Respondent and Respondent's Administrative Contact and Technical Contact on March 13, 2002.
3.7. On March 21, 2002, Dr Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint was sent by email to the Administrative Panel on March 21, 2002, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. Complainant, according to its certified Complaint and Annexes, is a French Company trading in a wide variety of merchandise including watches and fashion items. The Company can trace its history back to 1947. It has expanded considerably since about 1988 and is now represented in 50 countries through about 500 outlets and boutiques.
4.2. Mainly since the mid-1990s, the Complainant has registered its trademark MORGAN, usually associated with stylized heart symbols, in many countries and in connection with many classes of fashion goods including watches.
4.3. The Complainant Company has licensed its trademark MORGAN to other corporations across the world. Among other licenses, a license to a Company in Taiwan covering watches has been in force since March 3, 1998. The trade in watches under this license has been substantial and valuable.
4.4. Watches are sold bearing the MORGAN trademark clearly emblazoned across the dial and are prominently advertised in Taiwan through the Complainant's authorized licensee. However, the Complainant did not initially register its trademark in Taiwan. On January 8, 1999, the Respondent Chin Shyr Tarng Watch Industrial Co, Ltd., evidently a Taiwanese company engaged in the business of watches, applied to register a trademark in Taiwan embodying the word MORGAN.
4.5. On August 16, 2000, Complainant filed proceedings with the Intellectual Property Office, Taiwan, to have the Respondent's registration of the trademark MORGAN invalidated. Complainant won the case in a Decision issued on July 3, 2001 and also won the case when the Respondent took the matter to appeal.
4.6. Respondent's registration of the disputed Domain Name shows a record-created date February 20, 2001, which was later than Complainant had filed proceedings with the Taiwan Intellectual Property Office to have the Respondent's trademark MORGAN invalidated (August 16, 2000) and before the date of issuance of the Decision (July 3, 2001).
5. Parties� Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below) that:
5.2. The dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy (the Policy). The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3. The disputed Domain Name is confusingly similar to the MORGAN trademark in which Complainant has rights.
5.4. Respondent has no rights or legitimate interest in the disputed Domain Name.
5.5. Respondent�s registration and use of the disputed Domain Name is in bad faith in terms of the Policy. The Domain Name was registered primarily for the purpose of disrupting Complainant's business and to attract, for financial gain, Internet users to the Registrant�s website 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 the Registrant�s web site or location or of a product or service on the Registrant�s web site or location.
5.6. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.
B. Contentions of Respondent
5.7. No Response has been received from Respondent.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.3. The Domain Name subject to this Complaint is . Considering that Complainant not only holds the trademark MORGAN but uses it prominently on watches displaying the same brand name, there can be no doubt that the disputed Domain Name is confusingly similar and effectively identical to Complainant's trademark. The inclusion of ".com" or equivalent in a Domain Name is inevitable and of no consequence for the determination of similarity. The Panel finds for Complainant in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.4. Notwithstanding that this Complaint is uncontested, Complainant is required to establish that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Complainant has provided a copy of the Decision of the Intellectual Property Office, Ministry of Economic Affairs, Taiwan, to have the Respondent's registration of the trademark MORGAN invalidated. Complainant won the case in a clear and unequivocal Decision issued on July 3, 2001.
6.5. The Decision referred to in 6.4 above was appealed by Respondent. The present Complaint states on page 8, "The Respondent has brought an Appeal in August 2001 which has been successful (annex 12) ...". The Panel was not helped by being provided in Annex 12 with what is presumably the Appeal Decision written in 8 pages of Chinese characters, in contravention of Rules, 11. Only an attached copy of a letter dated January 9, 2002 from Complainant's Taiwan lawyers to Complainant's Paris lawyers alerted the Panel to the fact that the appeal was successful for the Complainant and went against the Respondent, otherwise the Decision in the present Complaint may well have been different from what it is.
6.6. On the basis that Complainant has twice succeeded in Taiwanese proceedings in establishing its rights to the trademark MORGAN, has asserted that Respondent has no rights or legitimate interests in the disputed Domain Name and that this has not been denied by Respondent, and that Respondent has not countered with any defense including those provided for (without limitation) by Paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests in the disputed Domain Name in the terms of Paragraph 4(a)(ii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.7. Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) provides four illustrative circumstances (without limitation) that shall be evidence of the registration and use of a Domain Name in bad faith.
6.8. There is no evidence that Respondent has attempted to sell, rent or transfer the disputed Domain Name registration to the Complainant in the manner contemplated by Paragraph 4(b)(i) of the Policy.
6.9. No evidence has been offered to the effect that Respondent has engaged in a pattern of blocking Domain Names to make them unavailable to a trademark holder in the terms of Paragraph 4(b)(ii) of the Policy.
6.10. Paragraph 4(b)(iii) would require evidence that the Domain Name was registered primarily for the purpose of disrupting a competitor's business. The word disrupt is defined (The Concise Oxford Dictionary, 3rd ed.) as shatter, separate forcibly; (disruption) bursting asunder, violent dissolution (etc). Possession by Respondent of a Domain Name thereby causing unquantified inconvenience to Complainant is not sufficient to qualify as disruption of Complainant's business.
6.11. Paragraph 4(b)(iv) recognizes as evidence of bad faith the circumstance in which Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's web site or location or of a product or service thereon. Paragraph 4(b)(iv) requires evidence of what has happened rather than of the Respondent's intentions. A printout of the first page of the website found in response to the disputed Domain Name made on February 20, 2002 was provided by WIPO Center. A longer printout of the website made on October 15, 2001 by Complainant (Annex 1) contains at least four different pages, includes the word MORGAN against a stylized heart symbol and contains pictures of watches. There can be no other plausible explanation for Respondent's actions than an attempt to divert traffic to Respondent's website for financial gain by confusion in the terms of Paragraph 4(b)(iv) of the Policy and the Panel finds for Complainant under this heading.
6.12. Criteria of bad faith are not limited to those exemplified in Paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy. In the present proceeding the Respondent: (1) registered the disputed Domain Name after proceedings had been filed against it in the Intellectual Property Office, Taiwan over the right to use the corresponding trademark; (2) must have known about those proceedings since it argued against them and took the case to appeal; (3) chose a Domain Name that was blatantly in conflict with Complainant's trademark and business and not in any sense conciliatory or even marginally dissimilar; (4) presented a website that not only portrayed the trademark name MORGAN to which Respondent was not entitled but also employed a heart symbol in a manner evoking Complainant's trademark and displayed watches. On the totality of the evidence the Panel finds bad faith proved in terms of Paragraph 4(a)(iii) of the Policy.
6.13. In summary, as concluded in 6.3 above Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.6 above, Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in alternatively 6.11 and 6.12 above, Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by Paragraph 4(a) of the Policy and the Administrative Panel awards its decision in favor of the Complainant and against the Respondent.
7. Decision
The Decision of the Administrative Panel is that the disputed Domain Name is confusingly similar to the trademark MORGAN in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Sole Panelist
Dated: April 4, 2002
Full & Egal Universal Law Academy