page 1WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONJardine Motors Group Holdings Limited v. Zung Fu KuenCase No. D2004-01681. The PartiesThe Complainant is Jardine Motors Group Holdings Limited, Hong Kong, China,represented by Baker & McKenzie, China.The Respondent is Zung Fu Kuen, China.2. The Domain Name and RegistrarThe disputed domain name is registered with OnlineNic, Inc. d/b/aChina-Channel.com.3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center(the “Center”) on March 5, 2004. On March 5, 2004, the Center transmitted by emailto OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification inconnection with the domain name at issue. On March 8, 2004, OnlineNic, Inc. d/b/aChina-Channel.com transmitted by email to the Center its verification response,confirming that the Respondent is listed as the registrant and providing the contactdetails for the administrative, billing, and technical contact. In response to anotification on March 19, 2004, by the Center that the Complaint be amended withregard to the mutual jurisdiction, the Complainant filed an amendment to the Complainton April 19, 2004. On April 22, 2004, The Center verified that the Complaint togetherwith the amendment to the Complaint satisfied the formal requirements of the UniformDomain Name Dispute Resolution Policy (the “Policy”), the Rules for UniformDomain Name Dispute Resolution Policy (the “Rules”), and the WIPO SupplementalRules for Uniform Domain Name Dispute Resolution Policy (the “SupplementalRules”).In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified theRespondent of the Complaint, and the proceedings commenced on April 22, 2004. Inpage 2accordance with the Rules, paragraph 5(a), the due date for Response wasMay 12, 2004. The Respondent did not submit any response. Accordingly, the Centernotified the Respondent’s default on May 26, 2004.The Center appointed Hong Xue as the sole panelist in this matter on June 2, 2004. ThePanel finds that it was properly constituted. The Panel has submitted the Statement ofAcceptance and Declaration of Impartiality and Independence, as required by theCenter to ensure compliance with the Rules, paragraph 7.The Panel has not received any further requests from the Complainant or theRespondent regarding other submissions, waivers or extensions of deadlines. ThePanel has decided to proceed under the customary expedited nature contemplated forthis 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 the Rules, paragraph 11(a), and also inconsideration of the fact that there is no express agreement to the contrary by theParties. In addition, pursuant to the Rules, paragraph 10(b), and in consideration of thecircumstances 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 as well.4. Factual BackgroundComplainant is a motor trading business within the Jardine Matheson Group, and hasregistered in Hong Kong, Macau and China various forms of the “ZUNGFU” mark,including the Chinese characters “仁孚” (the Chinese transliteration for “Zung Fu”).Complainant’s subsidiary, Zung Fu Company Limited (“Zung Fu”), is the exclusiveretailer of Mercedes-Benz vehicles in Hong Kong and Macau and operates authorizedworkshops for Mercedes Benz vehicles in China since 1993. Complainant has licensedZung Fu to use its trade marks including “ZUNG FU”, “ZF logo” and the Chinesecharacters “仁孚” (the Chinese transliteration for “Zung Fu”) for, inter alia, selling ofvehicles, repair and maintenance of vehicles. Complainant has also permitted Zung Futo adopt “ZUNG FU” as its corporate name.5. Parties’ ContentionsA. Complainanta) The Disputed Domain Name is identical or confusingly similar to atrademark or service mark in which Complainant has rights; (Policy, para.4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))The relevant part of the disputed domain name is “zungfu”, which is identical toComplainant’s trade mark “ZUNG FU” registered in Hong Kong, Macau and China.Complainant, through Zung Fu, its subsidiary and licensee, has acquired substantialreputation in Hong Kong and in the neighboring region for its “ZUNG FU” mark, andenjoys exclusive proprietary rights in such mark. When comparing a disputed domain name and a trademark, the addition of the “.com”suffix is treated as a domain name indicator and has no bearing in determining whetherthe domain name is identical or confusingly similar to the trade mark. In the presentpage 3case, the disputed domain name is identical to the “ZUNG FU” mark and contains the“ZUNG FU” mark in its entirety. b) Respondent has no rights or legitimate interests in respect of the DisputedDomain Name; (Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))Complainant and Zung Fu have never authorized Respondent to utilize the “ZUNGFU” mark, nor do they have any relationship or association whatsoever with theRespondent. Hence, any use by Respondent of the “ZUNG FU” mark directly violatesthe exclusive trademark rights residing in Complainant. “ZUNG FU” is also a name invented and devised by Zung Fu. Complainant’ssubsidiary, Zung Fu, has been using the “ZUNG FU” mark since 1954. The“registration information” provided by Respondent shows that its name “Zung FuKuen” contains the words “Zung Fu”. It is submitted that although an individual has aright to use his name (if such is his personal name) in connection with a business, suchright is not unfettered; instead it is circumscribed by the prior trade mark rights ofothers who use that name in connection with specific goods and services. Complainanthas reasons to believe that Respondent’s name “Zung Fu Kuen” is not a genuineChinese name since the surnames “Zung” or “Kuen” are unheard of in Chinese. It is afabricated name with a view to passing off as and implying a connection withComplainant.As a result of Complainant’s extensive use of the name “ZUNG FU” since 1954, it issubmitted that the mark “ZUNG FU”, even if it is part of a genuine name ofRespondent, has acquired secondary meaning and hence fame to the point where asignificant proportion of the public and the Internet community is likely to recognizethat name as signifying the specific, unique and widely recognized brand of Zung Fuand/or Complainant. The Google search results against the mark “ZUNG FU” showshow well-known the mark is to the public in Hong Kong and the region, as well as theInternet community. On the other hand, Respondent is not and has never been commonly known by thedisputed domain name (see Policy, para 4(c)(ii)). Google search against the name“Zung Fu Kuen” also fails to produce any hit.At no point in time has the disputed domain name been used in connection with thebona fide offering of any goods or services (see Policy, para. 4(c)(i)). The evidenceavailable to Complainant indicates that “fashionid.com” has used the disputed domainname to attract traffic to an adult website. After the disputed domain name wastransferred to Respondent, Respondent’s website has either been re-directed to acompetitor’s site or “parked” at another website that leads users to other sites related toMercedes Benz vehicles, in either case potentially diverting business from Zung Fu. c) The Disputed Domain Name was registered and is being used in bad faith(Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))Complainant first came across the registration of the disputed domain name inAugust 2003. The domain name was registered in the name of ofCyprus at that time. At that point in time, Complainant found that the website at the disputed domain namecontained graphic sexual materials. As the disputed domain name was identical to thename of Complainant’s subsidiary and Complainant’s registered trade mark “ZUNGpage 4FU”, Complainant was concerned that the public would be misled into thinking that thedisputed domain name and the website were owned by Complainant and that thewebsite was somehow licensed, authorized or affiliated with Complainant. In addition,as the website contained pornographic materials, it would seriously tarnish and damagethe image and goodwill built up by Complainant and Zung Fu. In view of this,Complainant instructed its US attorney, Messrs. Ladas & Parry (“US Attorney”), tosend a cease and desist letter to “fashionid.com” demanding it to stop using thedisputed domain name. Despite various attempts made by the US Attorney, they failed to establish anycommunication with “fashionid.com”. The US Attorney then discovered that“info@fashionid.com” was also listed as the contact email for the domain name. From the website of “www.fashionid.com”, the US Attorney foundthat “fashionid.com” was a “joint venture development” with another company calledCentriz.com Ltd. (“Centriz.com”) based in Hong Kong. The US Attorney then sentanother letter to Centriz.com dated September 25, 2003, asking them to direct the letterto the management of “fashionid.com”. On September 28, 2003, the US Attorney received an email response from Centriz.comstating that the disputed domain name was owned by one of its client, “fashionid.com”and that they had already informed “fashionid.com” about the matter. Centriz.comfurther stated that it only provided hosting services for “fashionid.com” and asked theUS Attorney to contact fashionid.com directly. Since the reply of Centriz.com on September 28, 2003, Complainant and its USAttorney did not hear from either “fashionid.com” or Centriz.com. Subsequently,Complainant discovered that the disputed domain name was transferred to “Zung FuKuen”, Respondent, in China. It was also discovered that the URL was redirected to awebsite at “www.canful.com.hk” for a short period of time in December 2003. Thiswebsite continues to be operated by Canful Motors Ltd. in Hong Kong, a parallelimporter of Mercedes-Benz vehicles in Hong Kong and a direct competitor of Zung Fu.Canful Motors Ltd. boosts clienteles in Hong Kong, China and South East Asia. The domain name was registered in bad faith. Complainant and Zung Fu haveregistered and extensively used the mark “ZUNG FU” in Hong Kong and in theneighboring region. From the registration information of Respondent, if true, it islocated in China. Respondent was well aware that he was infringing Complainant’strade mark at the time when he registered the disputed domain name in view of theexisting businesses of Zung Fu in China and the fact that the domain name was re-directed to Canful Motor, a direct competitor of Zung Fu. Given the long history ofZung Fu in Hong Kong and in the region, it is submitted that Respondent should haveknown, at the time it registered the disputed domain name, that Complainant hasproprietary rights in the name “ZUNG FU”.Complainant further contends that the original registrant “fashionid.com” must beconnected to Respondent in some way and both have probably submitted falseregistration particulars to avoid liability. Although the disputed domain name wastransferred from “fashionid.com” to Respondent, it is noted that the billing, technicaland administrative contacts of both parties all point to an identical P.O. Box number,“except that “fashionid.com” claimed to be located in Cyprus and Respondent in theChina. To the best knowledge of Complainant, the Respondent’s address is inaccurate,incomplete, and fabricated as it has not included the town and city in which the PO Boxis allegedly situated. Further, the Whois search results reveals that the registrationdetails of Respondent were last updated on September 29, 2003, immediately after thepage 5US Attorney received the response from Centriz.com that it had forwarded the demandletter to “fashionid.com”. From these surrounding factors and circumstances, it ishighly suspicious that “fashionid.com” and Respondent are related parties. The“transfer” of the disputed domain name to Respondent was merely an attempt toprovide some sort of justification to the use of the words “ZUNG FU” as part of anindividual name. The website at the disputed domain name initially contained pornographic materials. Itis well-established under WIPO case law that whatever the motivation of the registrant,the diversion of domain names to pornographic sites is itself certainly consistent withthe finding that the disputed domain name was registered and being used in bad faith.The disputed domain name was then “transferred” to Respondent and re-directedtemporarily to another website at “www.canful.com.hk” owned by Canful Motors Ltd.,a parallel importer of Mercedes-Benz vehicles and a direct competitor of Zung Fu.Thus, even if Respondent is not related to “fashionid.com”, it is submitted thatRespondent registered the domain name with an aim to preventing the owner of thetrade mark, i.e. Complainant, from reflecting the mark in a corresponding domain nameand primarily for the purpose of disrupting the business of a competitor.The disputed domain name is at the date of this complaint “pointed to” or “parking at”a site entitled “Zungfu.com - Your source for the most popular Zungfu info!” withhyperlinks to other sites offering Mercedes-Benz vehicles and accessories. By divertingaway Internet traffic (including possible customers) intended for Complainant’swebsite, Respondent is not making fair or legitimate use of Complainant’s ZUNG FUmark. Accordingly, it is submitted that “fashionid.com” and/or Respondent has registered andused the disputed domain name in bad faith.B. RespondentThe Respondent did not reply to the Complainant’s contentions.6. Discussion and FindingsA. Identical or Confusingly SimilarPursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domainnames are identical or confusingly similar to a trademark or service mark in which thecomplainant has rights. The Complainant is the registrant of the trademark “ZUNGFU” in Hong Kong, Macauand China, and enjoys exclusive proprietary rights in such mark. The disputed domainname , except for the generic top-level domain designation “.com”, isidentical to the Complainants’ registered trademark “Zungfu”. The Panel, thereforeholds that the Complaint fulfills the condition provided in the Policy, paragraph 4(a)(i).B. Rights or Legitimate InterestsThe Complainant contended that the Respondent has no rights or legitimate interests inrespect of the disputed domain name. The Respondent did not reply to theComplainant’s contention. page 6The disputed domain name is registered in the name of “Zung Fu Kuen”, which seemslike a Chinese individual name. However, without any proof from the Respondent, thePanel has no way to know whether the Respondent has been commonly known by thedomain name. Even if “Zung Fu Kuen” is the personal name of the Respondent, the Respondent, still,cannot claim to have rights or legitimate interests in the disputed domain name wherethe Respondent has notice that the disputed domain is identical with the Complainant’smark and uses the domain name in bad faith. See Marconi Data Systems, Inc. v. IRGCoins and Ink Source, Inc., WIPO Case No. D2000-0090, in which the Panel ruled that“one who has constructive knowledge of the trademark, and who contacts thetrademark owner and advises the owner that he has acquired a confusingly similardomain name which he intends to use in competition with the trademark owner, has norights or legitimate interests in the domain name”. See also N.C.P. Marketing Group,Inc. v. Entredomains, WIPO Case No. D2000-0387, in which the Panel held that “badfaith registration and use of domain names does not establish rights or legitimateinterests”.In the present case, as shown in the registration information of the disputed domainname, the Respondent resides in China, where “Zungfu”, through extensive use andpromotion, has been recognized by a significant proportion of the public as the markexclusively associated with Zung Fu and/or the Complainant. The Respondent’s acts ofre-directing the disputed domain name to the website owned by Zung Fu and/orComplainant’s direct competitor, and of linking the website at the disputed domainname with other sites offering Mercedes-Benz vehicles and accessories, furtherdemonstrate that the Respondent not only knows the Complainant’s trademark“Zungfu”, but also knows the Complainant’s field of business in which the trademark“Zungfu” is used. For the above reasons, the Panel holds that the Respondent has no right or legitimateinterests in respect of the disputed domain name, and the Complaint fulfills thecondition provided in the Policy, paragraph 4(a)(ii).C. Registered and Used in Bad FaithThe Complainant contended that the disputed domain name was registered and used inbad faith. The Respondent failed to respond to such contention. As provided in theRules, paragraph 14, the Panel may draw such inference from the Respondent’s default,as it considers appropriate. The Panel finds that it is appropriate to accept theComplainant’s submissions.The Respondent, though made a statement in the Registration Agreement that all theinformation provided be complete and accurate, registered the disputed domain name ata P.O. Box address in China. It is fair to assume that the Respondent’s address isinaccurate, incomplete, and fabricated as it has not included the town and city in whichthe P.O. Box is allegedly situated. Furthermore, it is too coincident to be true that thepresent Respondent has the same P.O. Box number as the previous registrant of thedisputed domain name in Cyprus. Where Respondent provided false contact information, it may be the proof of the badfaith registration. See Hunton & Williams v. American Distribution Systems, Inc. et al.,WIPO Case No. D2000-0501, in which the Panel citing the non-exhaustive nature ofthe Policy, paragraph 4(b) found that Respondent’s bad faith was evidenced by hidingpage 7its true identity behind several different trade names, by using a post office box addressinstead of its actual address, and by using false names for contact persons such as“Billing Contact” instead of the name of an actual person. When the disputed domain name being used, the Respondent’s bad faith has also beenproved. The Respondent had re-directed the disputed domain name to a website at“www.canful.com.hk”, which is operated by Canful Motors Ltd. in Hong Kong, adirect competitor of Zung Fu and/or Complainant. Then, the Respondent pointed thedisputed domain name to a site entitled “Zungfu.com - Your source for the mostpopular Zungfu info!” with hyperlinks to other sites offering Mercedes-Benz vehiclesand accessories. All these acts demonstrate that the Respondent, by using the disputeddomain name, had intentionally attempted to attract, for commercial gain, Internet usersto the website at the disputed domain name, by creating a likelihood of confusion withthe Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of thewebsite at the disputed domain name or the products on the website of the disputeddomain name, as provided in the Policy, paragraph 4(b)(iv).The likelihood of confusion is not diminished by the possibility that the user willdiscover, upon arriving at the Respondent’s website, that the website it reached is notthe website it was seeking. Also, the possibility that the user may, upon reachingRespondent’s website, abandon efforts to locate the Complainant’s products, even if iteventually realizes that the website it reached is not the Complainant’s website, wouldamount to the proof that the Respondent’s act is for commercial gain. See NationalFootball League Properties, Inc. and Chargers Football Company v. One SexEntertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118, in which thePanel found a likelihood of confusion even though users would soon discover theunlikelihood of a business relationship between Complainant and Respondent becauseRespondent would have gained website traffic from the establishment of the link via the“www.chargergirls.net” web site.Based on the above finding, the Panel rules that the Respondent registered and used thedisputed domain name in bad faith pursuant to the Policy, paragraph 4(b), and thus theComplaint fulfills the condition provided in the Policy, paragraph 4(a)(iii).7. DecisionFor all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15of the Rules, the Panel orders that the domain name, , be transferred tothe Complainant. Hong XueSole PanelistDated: June 16, 2004
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