WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jardine Motors Group Holdings Limited v. Zung Fu Kuen
Case No. D2004-0168
Also in PDF: D2004-0168
1. The Parties
The Complainant is Jardine Motors GroupHoldings Limited, Hong Kong, China, represented by Baker & McKenzie, China.
The Respondent is Zung Fu Kuen, China.
2. TheDomain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. ProceduralHistory
The Complaint was filed with the WIPOArbitration and Mediation Center (the ��Center��) on March 5, 2004. On March 5, 2004, the Centertransmitted by email to OnlineNic, Inc. d/b/a China-C a request forregistrar verification in connection with the domain name at issue. On March 8, 2004, OnlineNic, Inc. d/b/aChina-C transmitted by email to the Center its verification response,confirming that the Respondent is listed as the registrant and providing thecontact details for the administrative, billing, and technical contact. In response to a notification on March19, 2004, by the Center that the Complaint be amended with regard to the mutualjurisdiction, the Complainant filed an amendment to the Complaint on April 19, 2004.On April 22, 2004, The Center verified that the Complaint together with theamendment 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, paragraphs2(a) and 4(a), the Center formally notified the Respondent of the Complaint,and the proceedings commenced on April 22, 2004. In accordance with the Rules, paragraph 5(a), the due datefor Response was May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent��s default onMay 26, 2004.
The Center appointed Hong Xue as the solepanelist in this matter on June 2, 2004. The Panel finds that it was properlyconstituted. The Panel hassubmitted the Statement of Acceptance and Declaration of Impartiality andIndependence, as required by the Center to ensure compliance with the Rules,paragraph 7.
The Panel has not receivedany further requests from the Complainant or the Respondent regarding othersubmissions, waivers or extensions of deadlines. The Panel has decided to proceed under the customary expeditednature contemplated for this type of domain name dispute proceeding.
The language of the proceeding is English, as being the language of the Domain Name Registration and Service Agreement, pursuant to the Rules, paragraph 11(a), and also in consideration of the fact that there is no express agreement to the contrary by the Parties. In addition, pursuant to the Rules, paragraph 10(b), and in consideration of the circumstances of this administrative Proceeding, the Panel, for the purpose to ensure that each Party is given a fair opportunity to present its case, takes into account the evidential materials provided in Chinese as well.
4. FactualBackground
Complainant is a motor trading business within the Jardine Matheson Group, and has registered in Hong Kong, Macau and China various forms of the ��ZUNGFU�� mark, including the Chinese characters �����ڡ� (the Chinese transliteration for ��Zung Fu��). Complainant��s subsidiary, Zung Fu Company Limited (��Zung Fu��), is the exclusive retailer of Mercedes-Benz vehicles in Hong Kong and Macau and operates authorized workshops for Mercedes Benz vehicles in China since 1993. Complainant has licensed Zung Fu to use its trade marks including ��ZUNG FU��, ��ZF logo�� and the Chinese characters �����ڡ� (the Chinese transliteration for ��Zung Fu��) for, inter alia, selling of vehicles, repair and maintenance of vehicles. Complainant has also permitted Zung Fu to adopt ��ZUNG FU�� as its corporate name.
5. Parties��Contentions
A. Complainant
a) The Disputed Domain Name is identical or confusingly similar to a trademark 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 domainname is ��zungfu��, which is identical to Complainant��s trade mark ��ZUNG FU��registered in Hong Kong, Macau and China. Complainant, through Zung Fu, its subsidiary andlicensee, has acquired substantial reputation in Hong Kong and in the neighboring region for its ��ZUNG FU�� mark,and enjoys exclusive proprietary rights in such mark.
When comparing a disputed domain name and atrademark, the addition of the ��.com�� suffix is treated as a domain nameindicator and has no bearing in determining whether the domain name isidentical or confusingly similar to the trade mark. In the present case, the disputed domain name is identical tothe ��ZUNG FU�� mark and containsthe ��ZUNG FU�� mark in itsentirety.
b) Respondent has norights or legitimate interests in respect of the Disputed Domain Name; (Policy,para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Complainant and Zung Fu have neverauthorized Respondent to utilize the ��ZUNG FU�� mark, nor do they have anyrelationship or association whatsoever with the Respondent. Hence, any use by Respondent of the ��ZUNGFU�� mark directly violates the exclusive trademark rights residing inComplainant.
��ZUNG FU�� is also a name invented anddevised by Zung Fu. Complainant��s subsidiary, Zung Fu, has been using the��ZUNG FU�� mark since 1954. The ��registration information�� provided byRespondent shows that its name ��Zung Fu Kuen�� contains the words ��Zung Fu��. Itis submitted that although an individual has a right to use his name (if suchis his personal name) in connection with a business, such right is notunfettered; instead it is circumscribed by the prior trade mark rights ofothers who use that name in connection with specific goods and services. Complainant has reasons to believe thatRespondent��s name ��Zung Fu Kuen�� is not a genuine Chinese name since thesurnames ��Zung�� or ��Kuen�� are unheard of in Chinese. It is a fabricatedname with a view to passing off as and implying a connection with Complainant.
As a result of Complainant��s extensive useof the name ��ZUNG FU�� since 1954,it is submitted that the mark ��ZUNG FU��, even if it is part of a genuine nameof Respondent, has acquired secondary meaning and hence fame to the point wherea significant proportion of the public and the Internet community is likely to recognizethat name as signifying the specific, unique and widely recognized brand ofZung Fu and/or Complainant. TheGoogle search results against the mark ��ZUNG FU�� shows how well-known the markis to the public in Hong Kong and the region, as well as the Internetcommunity.
On the other hand, Respondent is not and hasnever been commonly known by the disputed domain name (see Policy, para4(c)(ii)). Google search againstthe name ��Zung Fu Kuen�� also fails to produce any hit.
At no point in time has the disputed domain name been used inconnection with the bona fideoffering of any goods orservices (see Policy, para. 4(c)(i)). The evidence available toComplainant indicates that ����has used the disputed domain name to attract traffic to an adult website. After the disputed domain name wastransferred to Respondent, Respondent��s website has either been re-directed to a competitor��ssite or ��parked�� at another website that leads users to other sites related toMercedes Benz vehicles, in either case potentially diverting business from ZungFu.
c) The Disputed Domain Name was registered and is being used in badfaith (Policy, paras. 4(a)(iii), 4(b); Rules, para. 3(b)(ix)(3))
Complainant first came across theregistration of the disputed domain name in August 2003. Thedomain name was registered in the name of of Cyprus atthat time.
At that point in time, Complainant foundthat the website at the disputed domain name contained graphic sexualmaterials. As the disputed domainname was identical to the name of Complainant��s subsidiary and Complainant��sregistered trade mark ��ZUNG FU��, Complainant was concerned that the publicwould be misled into thinking that the disputed domain name and the websitewere owned by Complainant and that the website was somehow licensed, authorizedor affiliated with Complainant. Inaddition, as the website contained pornographic materials, it would seriouslytarnish and damage the image and goodwill built up by Complainant and ZungFu. In view of this, Complainantinstructed its US attorney, Messrs. Ladas & Parry (��US Attorney��), to senda cease and desist letter to ���� demanding it to stop using the disputeddomain name.
Despite various attempts made by the USAttorney, they failed to establish any communication with ����. The US Attorney then discovered that ��info@��was also listed as the contact email for the domain name . From the website of ��www.��,the US Attorney found that ���� was a ��joint venture development��with another company called C Ltd. (��C��) based in HongKong. The US Attorney then sentanother letter to C dated September 25, 2003, asking them to directthe letter to the management of ����.
On September 28, 2003, the US Attorney received an emailresponse from C statingthat the disputed domain name was owned by one of its client, ����and that they had already informed ���� about the matter.C further stated that it only provided hosting services for ����and asked the US Attorney to contact directly.
Since the reply of C on September28, 2003, Complainant and its US Attorney did not hear from either ���� or C. Subsequently, Complainant discoveredthat the disputed domain name was transferred to ��Zung Fu Kuen��, Respondent, inChina. It was also discovered thatthe URL was redirected to a website at ���� for a short periodof 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 ZungFu. Canful Motors Ltd. boostsclienteles in Hong Kong, China and South East Asia.
Thedomain name was registered in bad faith.Complainant and Zung Fu have registered and extensively used the mark ��ZUNG FU��in Hong Kong and in the neighboring region. From the registration information of Respondent, if true, itis located in China. Respondentwas well aware that he was infringing Complainant��s trade mark at the time whenhe registered the disputed domain name in view of the existing businesses ofZung Fu in China and the fact that the domain name was re-directed to CanfulMotor, a direct competitor of Zung Fu. Given the long history of Zung Fu in Hong Kong and in the region, it is submitted that Respondent should have known, at the time itregistered the disputed domain name,that Complainant has proprietary rightsin the name ��ZUNG FU��.
Complainant further contends that theoriginal registrant ���� must be connected to Respondent in some wayand both have probably submitted false registration particulars to avoidliability. Although the disputeddomain name was transferred from ���� to Respondent, it is notedthat the billing, technical and administrative contacts of both parties allpoint to an identical P.O. Box number, ��except that ���� claimed tobe located in Cyprus and Respondent in the China. To the best knowledge of Complainant, the Respondent��s addressis inaccurate, incomplete, and fabricated as it has not included the town andcity in which the PO Box is allegedly situated. Further, the Whois search results reveals that theregistration details of Respondent were last updated on September 29, 2003, immediatelyafter the US Attorney received the response from C that it hadforwarded the demand letter to ����. From thesesurrounding factors and circumstances, it is highly suspicious that ���� and Respondent arerelated parties. The ��transfer�� of the disputed domain nameto Respondent was merely an attempt to provide some sort of justification tothe use of the words ��ZUNG FU�� as part of an individual name.
The website at the disputed domain nameinitially contained pornographicmaterials. It is well-established under WIPO case lawthat whatever the motivation of the registrant, the diversion of domain namesto pornographic sites is itself certainly consistent with the finding that the disputeddomain name was registered and being used in bad faith.
The disputed domain name was then ��transferred��to Respondent and re-directed temporarilyto another website at ���� owned by Canful Motors Ltd., a parallel importer of Mercedes-Benzvehicles and a direct competitor of Zung Fu. Thus, even if Respondent is not related to ����,it is submitted that Respondent registered the domain name with an aimto preventing the owner of the trade mark, i.e. Complainant, from reflectingthe mark in a corresponding domain name and primarily for the purpose ofdisrupting the business of a competitor.
The disputed domain name is at the date ofthis complaint ��pointed to�� or ��parking at�� a site entitled ��Z - Your source for the mostpopular Zungfu info!�� with hyperlinksto other sites offering Mercedes-Benzvehicles and accessories. By diverting away Internet traffic (includingpossible customers) intendedfor Complainant��s website,Respondent is not making fair or legitimate use of Complainant��s ZUNG FU mark.
Accordingly,it is submitted that ���� and/orRespondent has registered and used the disputed domain name in badfaith.
B. Respondent
The Respondent did not reply to the Complainant��s contentions.
6. Discussionand Findings
A. Identical or Confusingly Similar
Pursuant to the Policy, paragraph4(a)(i), a complainant must prove that the domain names are identical orconfusingly similar to a trademark or service mark in which the complainant hasrights.
TheComplainant is the registrant of the trademark ��ZUNGFU�� in Hong Kong, Macau andChina, and enjoys exclusiveproprietary rights in such mark. The disputed domain name, except for the generic top-level domain designation ��.com��,is identical to the Complainants�� registered trademark ��Zungfu��. The Panel,therefore holds that the Complaint fulfills the condition provided in thePolicy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
TheComplainant contended that the Respondent has no rights or legitimate interestsin respect of the disputed domain name. The Respondent did not reply to theComplainant��s contention.
The disputeddomain name is registered in the name of ��Zung Fu Kuen��, which seems like aChinese 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 where the Respondent has notice that the disputed domain is identical with the Complainant��s mark and uses the domain name in bad faith. See Marconi Data Systems, Inc. v. IRG Coins 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 the trademark owner and advises the owner that he has acquired a confusingly similar domain name which he intends to use in competition with the trademark owner, has no rights 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 ��bad faith registration and use of domain names does not establish rights or legitimate interests��.
In the presentcase, as shown in the registrationinformation of the disputed domain name, the Respondent resides in China, where��Zungfu��, through extensive use and promotion, has been recognized by asignificant proportion of the public as the mark exclusively associated withZung Fu and/or the Complainant. The Respondent��s acts of re-directing thedisputed domain name to the website owned by Zung Fu and/or Complainant��sdirect competitor, and of linking the website at the disputed domain name with othersites 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 thetrademark ��Zungfu�� is used.
For the above reasons, the Panel holds thatthe Respondent has no right or legitimate interests in respect of the disputeddomain name, and the Complaint fulfills the condition provided in thePolicy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant contendedthat the disputed domain name was registered and used in bad faith. TheRespondent failed to respond to such contention. As provided in the Rules,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 acceptthe Complainant��s submissions.
The Respondent, thoughmade a statement in the Registration Agreement that all the informationprovided be complete and accurate, registered the disputed domain name at aP.O. Box address in China. It is fair to assume that the Respondent��s addressis inaccurate, incomplete, and fabricated as it has not included the town andcity in which the 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 ofthe disputed domain name in Cyprus.
Where Respondent provided false contact information, it may be the proof of the bad faith 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 of the Policy, paragraph 4(b) found that Respondent��s bad faith was evidenced by hiding its true identity behind several different trade names, by using a post office box address instead of its actual address, and by using false names for contact persons such as ��Billing Contact�� instead of the name of an actual person.
Whenthe 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����, which is operated by Canful Motors Ltd. in Hong Kong, a direct competitor of Zung Fu and/orComplainant. Then, the Respondent pointed the disputed domain name to a site entitled��Z - Your source for the mostpopular Zungfu info!�� with hyperlinksto other sites offering Mercedes-Benzvehicles and accessories. All these acts demonstrate that theRespondent, by using the disputed domain name, had intentionally attempted to attract,for commercial gain, Internet users to the website at the disputed domain name,by creating a likelihood of confusion with the Complainant��s mark as to thesource, sponsorship, affiliation, or endorsement of the website at the disputeddomain name or the products on the website of the disputed domain name, asprovided in the Policy, paragraph 4(b)(iv).
The likelihood of confusion is not diminished by the possibility that the user will discover, upon arriving at the Respondent��s website, that the website it reached is not the website it was seeking. Also, the possibility that the user may, upon reaching Respondent��s website, abandon efforts to locate the Complainant��s products, even if it eventually realizes that the website it reached is not the Complainant��s website, would amount to the proof that the Respondent��s act is for commercial gain. See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a , WIPO Case No. D2000-0118, in which the Panel found a likelihood of confusion even though users would soon discover the unlikelihood of a business relationship between Complainant and Respondent because Respondent would have gained website traffic from the establishment of the link via the ��www.�� web site.
Based on the above finding, the Panel rules that the Respondent registered and used the disputed domain name in bad faith pursuant to the Policy, paragraph 4(b), and thus the Complaint fulfills the condition provided in the Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Hong Xue
Sole Panelist
Dated: June 16, 2004
Full & Egal Universal Law Academy