WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Expoconsult B.V. trading as CMP Information v. Roc Guan Case No. D2008-1600 1. The Parties
Complainant is Expoconsult B.V. trading as CMP Information, Industrieweg, Netherlands, represented by Reynolds Porter Chamberlain LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Roc Guan, Tianjin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2008. On October 22, 2008, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On October 24, 2008, HiChina Zhicheng Technology Ltd. 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” or “UDRP”), 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 November 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2008. The Response was filed with the Center on November 24, 2008.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 28, 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 is a company established in the Netherlands and is in the business of organizing, conducting and promoting trade fairs, show and exhibitions on a worldwide basis. Complainant is the owner of the CPHI word mark and its various derivatives such as CPHI WORLDWIDE; CPHI (stylized); CPHI and device; CPHI SOUTH AMERICA and device; CPHI WORLDWIDE and logo; and CPHI WORLDWIDE and device in many countries including, the United Kingdom, the European Union Community, Brazil, Hong Kong, SAR of China, India, Singapore, United States of America, Benelux, France, Germany, Italy, Argentina and China. The trade mark registered in China is CPHI WORLDWIDE as a device mark and it was granted registration on April 14, 2003. The CPHI mark is registered for the services in following categories: 16 (printed matter, printed publications, catalogues, manuals, magazines, books […]), 35 (organizing, conducting and promoting trade fairs, shows and exhibitions […]) and 41 (organizing and conducting symposiums, seminars, conferences, congresses ad cultural or educational courses […]). The earliest registration of the CPHI mark was on October 15, 1999 in the United Kingdom and the Community Trade Mark for CPHI was granted in March 27, 2003.
Complainant has begun to launch the CPHI (the acronym for “Convention on Pharmaceutical Ingredients”) Worldwide as an international convention on pharmaceuticals ingredients and intermediaries since 1990. In 2001, Complainant began to organize regional CPHI events and the first regional event was conducted in China. The CPHI China events are organized and hosted in conjunction with CMP Sinoexpo and the China Chamber of Commerce for Import and Export of Medicines and Health Products. Complainant promoted and advertised its CPHI events in China through magazines, directories as well as through the Internet.
Complainant's website “” was first launched on February 1, 1999.
Respondent's domain name was registered in 2006 and expires on December 21, 2016. 5. Parties' Contentions A. Complainant Identical or Confusingly Similar
Complainant asserts that it has rights over the trade mark CPHI which is the acronym for “Convention on Pharmaceutical Ingredients” and that it enjoys wide spread goodwill in this trade mark. Complainant further asserts that the CPHI mark has been incorporated as a key component in the disputed domain name, the rights of which belong to Complainant. Complainant asserts that the incorporation of the CPHI mark in the disputed domain name results in confusion on the part of the public over the ownership and sponsorship of Respondent's website. Rights or Legitimate Interests
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain name for the following reasons:
1. Respondent is not affiliated with Complainant in any way.
2. Complainant did not grant any licence, consent or other right by which Respondent would have a legitimate right to use the CPHI mark.
3. Respondent did not make any use of, or demonstrable preparations to use the disputed domain name or a name corresponding to a domain name, in connection with a bona fide offering of goods or services. Respondent is using the website at the disputed domain name to provide information relating to various pharmaceutical products and links to various manufacturers of these products and is direct competition with Complainant. This is no bona fide use as Respondent is using Complainant's worldwide rights to exploit the reputation and goodwill which Complainant owns in CPHI illegitimately for its own commercial gain, to mislead consumers and to damage the reputation of the CPHI mark.
4. Complainant is not aware of any applications for the trade mark CPHI by Respondent or by any other party. Registered and Used in Bad Faith
Complainant asserts that Respondent has registered and used the disputed domain name in bad faith for the following reasons:
1. Complainant asserts that it has acquired a strong reputation in China (where Respondent is based) and throughout the world. Thus, Complainant believes that Respondent is fully aware of the existence of Complainant and its rights in CPHI at the time of registration of the disputed domain name.
2. Complainant asserts that Respondent intends to attract Internet users to the website at the disputed domain name by creating confusion with Complainant's trade mark CPHI.
3. Confusion is generated by (a) incorporating the CPHI mark as a key component in Respondent's domain name and in light of the numerous domain names registered by Complainant to protect its rights, the public will be led to believe that Respondent's domain name is also owned by Complainant; (b) Respondent's website at the disputed domain name makes repeated references to the CPHI events which in turns suggest that the suppliers listed have attended Complainant's conferences and or that Complainant is affiliated with or has endorsed the suppliers of products or services on Respondent's website. This suggested affiliation or endorsement by Complainant of Respondent's website may in turn encourage suppliers to register and pay for “Diamond Suppliers Membership” offered by Respondent which enables suppliers to be named as recommended suppliers. B. Respondent Identical or Confusingly Similar
Respondent argues that the disputed domain name is not identical or confusingly similar to a trade mark in which Complainant has rights for the following reasons:
1. The trade mark which Complainant registered at the UK Trade Mark Registry is CPHI WORLDWIDE and not CPHI. These two marks are different.
2. Respondent disputes Complainant's registered trade mark rights of CPHI in China because Respondent claims that the only mark registered in the Chinese Trade Mark Registry is CPHL and not CPHI.
3. Respondent emphasized that in the publicity materials relating to Complainant's 2008 events, Complainant has used different trade marks in the form of CPHI worldwide, CPHI Japan, and CPHI China, and not CPHI.
4. Respondent asserts that CPHI and CPHIonline are different and there is no confusion. Rights or Legitimate Interests
Respondent asserts that it has rights or legitimate interests in the disputed domain name for the following reasons:
1. Respondent has registered the disputed domain name in 2006.
2. Respondent created the website to establish a “online information database of chemical pharmaceutical ingredients” and “CPHIonline” is the acronym of “online information database of chemical pharmaceutical ingredients”.
3. Respondent is of the view that it does not need the consent and permission of Complainant who is the trade mark owner of CPHL to register and use the domain name “cphionline” in China. Respondent adduced evidence to show that the trade mark registered in China is CPHL and not CPHI.
4. Respondent asserts that its domain name is now widely known amongst the chemical pharmaceutical industry and its website enjoys a high volume of Internet visitors.
5. Respondent has been operating its website independently and legitimately since 2006 and did not engage in any activities aimed at diverting Internet traffic to its website through confusion with Complainant's trade mark. Registered and Used in Bad Faith
Respondent asserts that it did not register and is not using the disputed domain name in bad faith on the following grounds:
1. Respondent casts doubts on whether Complainant has rights in the CPHI mark and asserts that Complainant is also not the trade mark owner of “cphionline”.
2. Even if Complainant is the trade mark owner of CPHI in Europe, Respondent argues that it did not register , , or and thus did not prevent Complainant from reflecting its CPHI trade mark in domain names.
3. Respondent is not a competitor of Complainant. The service classification of the registered trade mark CPHL in China under the trade mark registration number 3018559 is for organization of trade exhibitions and seminars and in this respect, Respondent's website which provides information on pharmaceutical products and supplies is not in competition with Complainant. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English should be the language of the present proceeding because (a) Respondent's website is in English; (b) the website appears to have been directed to users worldwide rather than solely Chinese speakers and the website makes reference to manufacturers throughout the world including those in India, Belgium and Germany; (c) the subject matter of the website which includes highly technical and scientific information suggests that Respondent has an advanced knowledge of English and would not be prejudiced should English be the language of these proceedings.
After considering the circumstances of the present case and the submission of Complainant's request, the Panel is of the opinion that the language for the present proceedings should be in English and the decision will be rendered in English. The Panel based its decision on the following reasons: (i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time, and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case. (ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English; (b) Respondent's website is in English; (c) the website appears to have been directed to users worldwide rather than solely Chinese speakers and the website makes reference to manufacturers throughout the world including those in India, Belgium and Germany; (d) the subject matter of the website which includes highly technical and scientific information suggests that Respondent has an advanced knowledge of English and would not be prejudiced should English be the language of these proceedings; (e) the Center has notified Respondent of the proceedings in both Chinese and English; (f) Respondent was able to respond in a document that contains both English and Chinese materials. Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the CPHI mark in China and several other countries in the world. In view of Respondent's assertions that Complainant does not have registered rights China of the mark CPHI and that the only mark which registered is CPHL, the Panel has by an Administrative Panel Order dated December 22, 2008 ordered that Complainant to adduce evidence to establish its rights in the CPHI mark in China. Complainant has replied on December 29, 2008 with attached trade mark certificate from the Chinese Trade Mark Registry of the CPHI device mark, registration number 3018559. The CPHI device mark is registered with effect from April 14, 2003 in China. In reply, Respondent submitted an unsolicited supplemental filing in substantial part reiterating its previous arguments which the Panel discusses below.
The Panel finds that Complainant has rights and continues to have such rights in the relevant CPHI mark. The Panel further notes that Complainant enjoys trade mark protection in respect of its CPHI device mark in China since April 14, 2003.
The disputed domain name consists of Complainant's CPHI mark in its entirety with the addition of the word “online” and the gTLD “.com”. Although CPHI is the acronym for “Convention on Pharmaceutical Ingredients”, through extensive and long usage the Panel finds that it has acquired a secondary meaning which refers to Complainant and its business of organizing conventions, exhibitions and events for pharmaceutical products. The Panel finds that Complainant enjoys wide spread goodwill in this CPHI trade mark, in particular within the pharmaceutical products business community. The Panel finds that the term “cphi” in Complainant's CPHI mark is the distinctive portion of Complainant's marks and it has been reproduced in its entirety in the disputed domain name. The addition of a generic or descriptive word such as “online” as the case may be to the term “cphi” is not adequate to distinguish the final composite word from Complainant's CPHI mark and does not alter the overall impression that Complainant's distinctive mark has been incorporated into the disputed domain name. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. This conclusion of the Panel is further buttressed by a lack of plausible explanation on the part of Respondent in his choice of the domain name. Although Respondent has argued that “cphionline” means “online information database of chemical pharmaceutical ingredients”, the Panel is not persuaded by Respondent's argument given the extensive prior use of the CPHI mark by Complainant and the notoriety of the CPHI mark particularly within the pharmaceutical business community. Thus, the Panel finds that visually and conceptually, the disputed domain name is confusingly similar to Complainant's CPHI mark. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's trade marks in which Complainant has rights.
The Panel finds for Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that Complainant has established a prima facie case of Respondent's lack of rights or legitimate interests to the domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “cphionline” in its business operations;
2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its CPHI trade mark;
3. There is no indication whatsoever on the record that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its CPHI mark enjoys wide spread goodwill in the organization of conventions, exhibitions and seminars for pharmaceutical products and suppliers especially within the pharmaceutical business community. Consequently, in the absence of contrary evidence from Respondent, the CPHI mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”
Respondent has argued that the disputed domain name was registered in 2006. Consequently, Respondent has rights or legitimate interests in the domain name. It is important to note that under the ICANN regulations, a domain name registrant undertakes not to register a domain name which infringes the rights of a third party and in this regard, registration of the disputed domain name by Respondent is subject to the legitimate rights of third party trade mark owners. Although Respondent has argued that “cphionline” is the acronym of “online information database of chemical pharmaceutical ingredients”, the Panel does not find Respondent's explanation to be persuasive given the extensive prior use of the CPHI mark by Complainant and the notoriety of the CPHI mark particularly within the pharmaceutical business community. Furthermore, the Panel finds that Respondent has not adduced plausible evidence to show that it owns any registered trade mark rights in the name “cphionline” or that it has been using this term in association with its business prior to registration.
Although Respondent has used the disputed domain name to offer goods and services on the Internet, it is important to note that this does not automatically mean Respondent has acquired rights or legitimate interests in the disputed domain name with this use. A purported offering of services by Respondent under a domain name which infringes third party's intellectual property rights cannot of itself confer onto Respondent rights or legitimate interests in the domain name. The Panel finds that the incorporation of the CPHI mark as a key component of Respondent's domain name and the extensive references to Complainant's activities and events on Respondent's website when Respondent has not obtained consent from Complainant for such use of the CPHI mark are possible grounds for trade mark infringement and cannot confer legitimate rights on Respondent.
Respondent is of the view that it does not need the consent and permission of Complainant who is the trade mark owner of CPHL and not CPHI to register and use the domain name “cphionline” in China. Respondent adduced evidence to show that the trade mark registered in China is CPHL and not CPHI. The Panel has requested for evidence of the trade mark registration of CPHI device mark in China from Complainant and is satisfied that Complainant enjoys trade mark protection in China for its CPHI device mark since April 14, 2003.
Respondent further asserts that its domain name is now widely known amongst the chemical pharmaceutical industry and its website enjoys a high volume of Internet visitors. It has been operating its website independently and legitimately since 2006 and did not engage in any activities aimed at diverting Internet traffic to its website through confusion with Complainant's trade mark. Given the fact that the disputed domain name is confusingly similar to Complainant's CPHI mark which it has rights, it is plausible to conclude that the high volume of Internet visitors enjoyed by Respondent's website is a result of riding on the notoriety of Complainant's CPHI mark which is incorporated in its entirety in the disputed domain name and the references made in the website to Complainant's CPHI events. It appears that Respondent cannot conduct its business without possibly infringing the intellectual property rights of Complainant and in this way, Respondent cannot be said to have rights or legitimate interests in the disputed domain name.
In conclusion, the Panel finds that Respondent has not successfully discharged his burden of proving that he has rights or legitimate interests in the disputed domain name .
The Panel finds for Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
To find bad faith on the part of Respondent and to order a transfer of the disputed domain name to Complainant under the present proceeding, Complainant must discharge its burden of proof under the Policy that Respondent registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trade mark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant's mark. Respondent has argued that Complainant does not have registered trade mark rights in China for the CPHI mark and that the mark registered in CPHL instead. The Panel has requested for evidence of the trade mark registration of CPHI device mark in China from Complainant and is satisfied that Complainant enjoys trade mark protection in China for its CPHI device mark since April 14, 2003.
It is important to note that generally according to accepted international standards, the fame or notoriety of a trade mark is often determined by the relevant section of the public for instance within a particular trade or industry. In the present case, the Panel is satisfied that Complainant has adduced sufficient evidence to show that it has acquired considerable reputation and goodwill in the CPHI mark particularly within the pharmaceutical business community including the Chinese market. Furthermore, in this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. More particularly, Respondent appears to be in the same trade and industry as Complainant and on the strength of Complainant's reputation in its trade mark CPHI within the pharmaceutical business community, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant's trade mark rights at the time of the registration of the domain name.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website which offers similar goods, pharmaceutical products and suppliers. Given the reputation of Complainant's CPHI trade mark within the pharmaceutical business community including the Chinese pharmaceutical market, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's widely known and distinctive trade mark, intended to ride on the goodwill of Complainant's trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential targeted partners and end users, who are most likely to be familiar with traders in the pharmaceutical business community including the Chinese pharmaceutical market, are led to believe that the website “www.” is either Complainant's website or is a website associated with or endorsed by Complainant or that Respondent is the authorized partner of Complainant, while in fact it is neither of these. This is further buttressed with evidence that Respondent has made numerous references to Complainant's CPHI events. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant's CPHI trade mark and this constitutes a misrepresentation to the public that Respondent's website is in one way or the other associated or connected with Complainant's. In the absence of evidence to the contrary and convincing rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test. 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 Complainant.
Susanna H.S. Leong
Sole Panelist
Date: January 8, 2009
Full & Egal Universal Law Academy