WIPO Domain Name Decision D2008-0820 for titoni.biz

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Titoni AG v. Runxin Wang

Case No. D2008-0820

 

1. The Parties

Complainant is Titoni AG, Grenchen, Switzerland, represented by Schluep/Degen, Switzerland.

Respondent is Runxin Wang, Xian, Shaanxi, People’s Republic of China.

 

2. The Domain Name and Registrar

The disputed domain name is registered with N LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2008. On May 28, 2008, the Center transmitted by email to N LLC a request for registrar verification in connection with the domain name at issue. On May 29, 2008, N LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2008. The Response was filed with the Center on June 22, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 30, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant asserts registration as a trademark of the term TITONI (standing alone or in combination with a design or additional terms) in a number of countries around the world. To evidence that registration, Complainant has submitted a computer printout listing the country, mark name, case type, status, renewal date and expiration date with respect to a number of countries. This listing alone, lacking even trademark registration numbers, is inadequate evidence of trademark registration (Complaint, Annex 4). Complainant indicates its trademark registration number in China in one piece of correspondence to Respondent attached to its Complaint (id., Annex 6.1). Complainant attached its certificate of registration in China in correspondence to Respondent, but did not include that certificate with its Complaint.

Respondent has done Complainant the favor of attaching a copy of the Certificate of Trademark Registration (sent earlier by Complainant to Respondent) for the word mark TITONI from the China Trademark Office, registration number 27236, in International Class 14, covering Watches, issued on June 1, 1998 (Response, Annex 2). The Panel accepts that TITONI is registered as a trademark by Complainant in China. It does not consider the other trademark registrations alleged by Complainant as sufficiently established.

Complainant is a manufacturer and distributor of watches founded in Switzerland in 1919. It focuses its marketing activities mainly in Asia and the Middle East. It maintains a commercial Internet website providing, inter alia, information concerning its watch products. In addition to English, Complainant operates a Chinese language version of its Internet website (available at “” and “”), on which its mark appears in its ordinary Roman script.

According to the Registrar’s Verification report, Respondent is the registrant of the disputed domain name, . According to a Speednames Whois database report of October 24, 2007, provided by Complainant, the record of registration for the disputed domain name was created on May 22, 2007 (Complainant, Annex 1.1). According to a N Whois database report of February 4, 2008 provided by Complainant, registration information was subsequently shielded by Protected Domain Services (id., Annex 1.2). Respondent does not challenge his ownership of registration of the disputed domain name.

An April 25, 2008, printout of the website identified by the disputed domain name includes the heading “Business from TI to NI” beneath which appears “Website under Construction ……” There is no further evidence of use of the disputed domain name.

Respondent, in response to a cease and desist and transfer demand from Complainant (through its counsel) of November 16, 2007, indicated in e-mail correspondence to Complainant on February 10, 2008, as follows:

“My domain TItoNI.biz (TI to NI) was registered for the commercial company which is being planned and is soon to be established. The commercial company will mainly conduct business in relation to the scientific and industrial technological equipments produced by the US Texas Instruments Company (TI) and the US National Instruments Company (NI). At present, the mail system for TItoNI.biz has already been put in use. Advertisements are being planned. Investments and the establishment of the website are also in progress.”

There is no further evidence of use by Respondent of the disputed domain name in the record of this proceeding.

The Registration Agreement in effect between Respondent and N, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the owner of rights in the trademark TITONI as evidenced by trademark registrations in several classes in different countries around the world. Complainant argues that the disputed domain name is identical to its TITONI mark, adding only “.biz”.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent has not acquired any trademark rights in TITONI, that Complainant has not licensed or otherwise authorized Respondent to use the mark, and that Respondent has not used the domain name to make a bona fide offering of goods or services prior to notice of this dispute. Complainant says that Respondent’s purported proposal for using the disputed domain name is surprising since, in an e-mail, Respondent alleged that he did not understand the English language. Complainant further argues that its trademark and its products are “very well known throughout the world and particularly in Asia and China”.

Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Complainant argues that Respondent was very likely aware of its trademark when it registered the disputed domain name since China is the main market for its watches and Respondent lives in China. Complainant states that Respondent registered the disputed domain name for the purpose of intentionally attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent alleges that Complainant’s trademark is not as famous in China as Complainant alleges and that Complainant’s trademark is not on an official list of famous marks attached to his Response (in Chinese, but with trademarks in their original languistic form).

Respondent contends that he registered the disputed domain name to be used with a company “being established mainly to conduct business around products made by TI and NI”.

Respondent argues that the disputed domain name will be used for business that is not competitive with that of Complainant and that Complainant’s trademark should not be extended to all fields without any conditions.

Respondent states that the construction of his website slowed down after receiving the first e-mail from Complainant on November 16, 2007. He contends that it is inauspicious to open a business in China in the midst of a dispute.

Respondent contends that while he is not an expert in the English language, he understands it, and that is not necessary to be an expert to do business in English.

Respondent says that his business will target scholars and engineers, and electrical power research and its industrial application engineering areas, that are more likely to be familiar with products from TI and NI than products from Complainant. He does not intend to attract customers using Complainant’s mark.

Respondent argues that he did not register the disputed domain name in bad faith. He has not attempted to sell it to Complainant. Complainant has not been prevented from registering its trademark as a domain name because it has a number of other domain names incorporating its trademark. There is no competition between the businesses of Complainant and Respondent. Respondent states that he did not register the disputed domain name to create confusion. He indicates that his website is under construction, but nothing on the website is likely to create confusion with Complainant and its mark, and nothing of that nature will happen in the future.

Respondent suspects that Complainant is engaged in reverse domain name hijacking.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant’s TITONI trademark is registered at the China Trademark Office. See Factual Background, supra. Complainant has submitted evidence of its use of the trademark in commerce, including on its Internet website where it provides information concerning its watch products and its distribution of those products. Respondent has not disputed Complainant’s trademark registration in China or its use of the trademark there. The Panel determines that Complainant has rights in the trademark TITONI.

The Panel notes that the TITONI trademark is inherently distinctive, at least in the English language, having no apparent meaning.1

The disputed domain name, , is identical to Complainant’s trademark with the exception of the generic top-level domain (gTLD) identifier “.biz”. The gTLD (e.g., “.com”, “.org”, “.info”) does not ordinarily distinguish the trademark from a domain name for purposes of determining identicalness or confusing similarity under the Policy. The Panel determines that the disputed domain name is identical to Complainant’s trademark for purposes of the Policy.

Respondent argues that the disputed domain name is not confusingly similar to the trademark because he proposes to use it in a different line of commerce than Complainant. As a general rule, assessments under Paragraph 4(a)(i) the Policy regarding the identical or confusingly similar character of a domain name and trademark do not consider the class of goods or services for which the trademark and domain name are used. To the extent that a respondent is using a trademark term in a domain name with respect to a class of goods or services for which the trademark is not being used by a complainant, this factor is considered in assessing whether the respondent is making legitimate use of the domain name and/or whether the domain name was registered and used in bad faith.

Complainant has not presented evidence sufficient to establish that its trademark is well known in China or elsewhere. This does not mean that Complainant could not make such a showing with adequate evidentiary support, only that it has not done so in this proceeding.

The Panel determines that Complainant has rights in the trademark TITONI and that the disputed domain name, , is identical to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“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 noncommercial 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.” (Policy, paragraph 4(c))”

Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant owns rights in the trademark used in the domain name and Respondent has not been authorized by Complainant to use its mark.

Respondent argues that he registered the disputed domain name in contemplation of establishing a commercial enterprise for a good-faith offering of goods2 without knowledge of Complainant’s trademark.

Respondent has provided no concrete evidence of his business plan, with the exception of a single line entry on his under construction homepage. He has not provided evidence of any business relationship or contacts with the enterprises in the United States from which he suggests he intends to supply products. He has not presented any evidence of formation of a business entity. Respondent’s purported intention of joining “TI” for “Texas Instruments”, using the preposition/adverb “to”, with “NI” for “National Instruments” in order to form “titoni” is implausible as an English-language construction. His statements regarding the proposed business appear to be self-serving attempts to explain the use of Complainant’s distinctive trademark in the disputed domain name. Without any concrete evidence of actual dealings or contact by Respondent with the U.S. corporate parties alleged to form a Respondent-TI-NI arrangement, the Panel does not accept Respondent’s explanation as the basis for registration of the disputed domain name. Respondent has failed to establish “demonstrable preparations” to use the disputed domain name for a bona fide offering of goods or services. See, e.g., Helen Fielding v. Anthony Corbert aka Anthony Corbett,WIPO Case No. D2000-1000.

Respondent has made no other plausible claim to establish rights or legitimate interests in the disputed domain name.

The Panel determines that Complainant has established that Respondent lacks right or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith” (Policy, paragraph 4(b)). Among these circumstances are that a respondent “by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).

Complainant’s TITONI trademark is distinctive in the English language, having no meaning. It is registered and used by Complainant in China, including on both English and Chinese language versions of Complainant’s website. So far, Respondent has used the disputed domain name only in connection with an “under construction” website with the heading “Business from TI to NI”. That use, and Respondent’s explanation, is sufficiently implausible as the precursor to a legitimate business, in combination with the distinctive character of Complainant’s trademark, to convince the Panel that Respondent’s intent in registration of the disputed domain name was to take advantage of Complainant’s rights in its trademark by creating, for commercial gain, a likelihood of confusion as to Complainant’s affiliation with Respondent’s website, including in Respondent’s future use of that website. The criteria of bad faith listed in Paragraph 4(b) are illustrative, not exhaustive. The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of Paragraph 4(b), generally, and Paragraph 4(b)(iv), specifically, of the Policy.

 

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.

Frederick M. Abbott
Sole Panelist

Dated: July 15, 2008

1 Complainant has not provided information regarding the linguistic derivation of its trademark. The Panel does not exclude the possibility that the trademark has a meaning in a language other than English, although a Google search of the term in German does not suggest a meaning. A Google search in Italian indicates that “Titoni” is used as a family name in Italy.

2 From certain third-party enterprises in the United States, see text following.

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