The Complainant is Sungen International Limited of Hong Kong, China, represented by Keith Chow & Co., Australia.
The Respondent is D C F X Solar Systems Pty Ltd of New South Wales, Australia, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with Domain Central Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to Domain Central Pty Ltd. a request for registrar verification in connection with the disputed domain name. On November 10, 2011, Domain Central Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. The Response was filed with the Center on December 9, 2011.
The Center appointed John Swinson as the sole panelist in this matter on December 19, 2011. 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
The Complainant is Sungen International Limited, a company incorporated in Hong Kong in, or about, 2008. The Complainant is a subsidiary company of Anwell Technologies Limited (“Anwell”) with trading and manufacturing business in solar photovoltaics panels and modules.
The Respondent is D C F X Solar Systems Pty Ltd (ACN 003 990 387), a company incorporated in New South Wales, Australia.
The disputed domain name was registered on August 24, 2005. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions: Identical or Confusingly Similar
The Complainant is a subsidiary company of Anwell and was incorporated in Hong Kong in 2008 with trading and manufacturing business in solar photovoltaics panels and modules.
Anwell is a publicly listed company and a highly regarded leader in optical disc and solar cells technology. Anwell was founded in about 2000 with its head office in Hong Kong and is a supplier of manufacturing equipment with trading and manufacturing business in optical disc and solar cells. Anwell has been listed on Singapore Stock Exchange since November 2004 and employs over 2,000 people worldwide. Anwell developed production equipment built from scratch using its own proprietary technologies and it set up the Complainant in 2008 to undertake the trading and manufacturing business in the group’s solar cell products.
The Complainant has a thin film solar module production facility in Henan, China using Anwell’s technologies and the photovoltaic modules are produced and marketed around the world under the brand name of SUNGEN and with a logo mark containing the word ”Sungen”. Moreover, on or about March 18, 2008, the Complainant registered the domain name and has used the website resolving from the domain name to market its company and SUNGEN branded solar panel products.
The Complainant has also acquired trade mark rights in the term SUNGEN by virtue of settlement arrangements entered into with Sungen Pty Ltd (now known as Pyramid Power Group Pty Ltd), a wholly owned subsidiary of the Respondent. Specifically, in or about August 2010, Sungen Pty Ltd transferred the Australian Registered Trade Mark 1299853, containing the word ”Sungen”, to the Complainant. Moreover, pursuant to the settlement agreement entered into by the Complainant and Sungen Pty Ltd, Sungen Pty Ltd changed its name on or about August 15, 2010.
Therefore, since about August 2010, the Complainant has owned exclusive rights and interests in the SUNGEN name and trade mark.
The disputed domain name and the Complainant’s trade marks are clearly identical or at least confusingly similar as any difference between them is negligible. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name.
Importantly, while the Respondent, being the parent company of Sungen Pty Ltd (now, Pyramid Power Group Pty Ltd), may have once had rights or legitimate interests in the disputed domain name, this is no longer the case.
Once the transfer of the trade mark to the Complainant was effected and the Respondent’s subsidiary company was no longer known as Sungen Pty Ltd, the Respondent no longer had any rights or interests in the disputed domain name.
Alternatively, even if an inferred license and/or authorisation to use the trade mark and the previous corporate name of “Sungen” is considered to have subsisted notwithstanding the settlement agreement and transfer of the relevant trade mark to the Complainant, such license and/or authorisation was revoked by the Complainant on or about September 9, 2011 by a demand from the Complainant to the Respondent’s director to cease use of the disputed domain name.
Accordingly, the Complainant contends that the Respondent no longer has any right to use the trade mark or the term “Sungen” in the disputed domain name.
Finally, the Respondent has not made any legitimate non-commercial or fair use of the disputed domain name. The Respondent has demonstrated this by, inter alia, offering to sell the disputed domain name to the Complainant for $AUD125,000.00. Registered or Subsequently Used in Bad Faith
While the Respondent’s registration of the disputed domain name may have been in good faith, the Respondent has subsequently used the disputed domain name in bad faith. Relevantly, the Respondent would have had the requisite knowledge of the settlement arrangements between the Complainant and the Respondent’s subsidiary. However, notwithstanding this, the Respondent retained the disputed domain name. It is also relevant that the Respondent entered revised details in the WhoIs database after notice of the transfer of the trade mark to the Complainant and change of its subsidiary’s company name.
Moreover, correspondence between the Complainant and the Respondent indicates the intention of the Respondent to retain the disputed domain name as an “investment”, and together with the Respondent’s offer to sell the disputed domain name to the Complainant for $AUD125,000.00, is clear evidence of bad faith as described in paragraph 4(b) of the Policy.
Further, the Complainant refers to Telstra Corporation Ltd v Nuclear Marshmallows,WIPO Case No. D2000-0003 where the Panel found that the respondent was acting in bad faith where it was passively holding a domain name and not making any legitimate use of it. Since August 2010, the Respondent’s passive holding of the disputed domain name, coupled with its offer to sell the disputed domain name, constitute bad faith.
Also, by retaining the disputed domain name, the Respondent is preventing a related company of the Complainant, Sungen Australia Pty Ltd, from using the trade mark SUNGEN in a corresponding domain name in Australia.
Finally, the Complainant further submits that the retaining of the disputed domain name by the Respondent poses a risk to the Complainant’s solar panel business. The Respondent is in a similar business to the Complainant and could easily reactivate the website resolving from the disputed domain name and attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s name or trade mark as to the source, sponsorship, affiliation or endorsement of that website.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent made the following submissions:
Generally, the disputed domain name was registered 33 months before the Complainant came into existence, 30 months before the domain name was registered and 58 months before the relevant trade mark transfer occurred. The company Sungen Australia Pty Ltd was only registered 6 months ago. Therefore, based on these facts it is clear that the Complainant cannot satisfy the first and second elements of the Policy. Identical or Confusingly Similar
- The Complainant registered its domain name and the SUNGEN trade mark after the creation and registration of the disputed domain name.
- The settlement agreement entered into by the Complainant and Sungen Pty Ltd did not refer to the purchase of the disputed domain name. Sungen Pty Ltd never owned the disputed domain name and has no authority to include it in the settlement agreement. The settlement agreement was only intended to cover the trade mark and not the disputed domain name. The Complainant never entered into any agreement or negotiations with the Respondent regarding the ownership of the disputed domain name.
- The Respondent registered the disputed domain name before the Complainant was formed. When the Respondent registered the disputed domain name, there was no other company or business with a name close or similar to the term “Sungen”. A similar name was created by the Complainant several years after the legitimate registration of the disputed domain name by the Respondent. To create a similar or identical name after the original domain name has been registered and then claim that name is similar, is not a valid complaint.
The Respondent also claims that the settlement agreement has not settled and given it appears that it will require arbitration, the Complainant cannot claim it has full rights to either the trade mark or the disputed domain name. As such, it is not appropriate for the Panel to consider rights in the disputed domain name. Rights or Legitimate Interests
- Before the Respondent received any notice of the dispute, there is evidence of the Respondent’s bona fide use of the disputed domain name in connection with an offering of goods or services. The Respondent invested a considerable amount of capital into the development of several solar related products. These products have been marketed under the name “Sungen” since 2006. The products have been commonly known by the disputed domain name.
- The Respondent has made a legitimate fair use of the disputed domain name. The disputed domain name was created before any other similar names or trade marks were created. The disputed domain name was created for the sole use of marketing legitimate products under that name. Registered or Subsequently Used in Bad Faith
- The Respondent registered the disputed domain name in good faith and has invested considerable time and finances.
- The Complainant’s company name was created after the disputed domain name was registered.
- Since the failed agreement, the Respondent has limited its use of the disputed domain name and at considerable cost, and has had to re-brand its products. The Respondent only wishes to recoup the cost of its investments. The disputed domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring to another person. It was the Complainant that duplicated the name and it is the Complainant that has continually harassed the Respondent to obtain the rights of the disputed domain name. The Complainant refuses to consider compensating the Respondent for the direct costs associated with the disputed domain name. The Respondent is not requesting valuable consideration in excess of the Respondent’s out-of-pocket expenses directly related to the disputed domain name.
- Further, the disputed domain name was not registered in order to prevent the Complainant from reflecting that name or mark in a corresponding domain name. The name was created years before the Complainant had registered any similar name.
The Respondent requests that the Panel make a finding of reverse domain name hijacking. The Complainant has, since its conception, continually tried to hijack the disputed domain name. The Respondent had rights in the disputed domain name long before the Complainant was created and acquired any comparable rights. The fact that one company is larger than the other does not entitle that company to greater rights than the original owner. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. The Panel finds it therefore appropriate to refer to UDRP precedent when deciding this case. A. Identical or Confusingly Similar
The Complainant owns an Australian Registered Trade Mark which depicts a stylized version of the term “Sungen”. The dominant component of the trade mark is the word “Sungen”. The disputed domain name is . It is thus clear that the disputed domain name and trade mark are confusingly similar and as such, the first element of the Policy is satisfied.
For this element of the Policy, it is irrelevant that the Complainant may have obtained its trade mark rights after the disputed domain name was registered. What is important is whether the Complainant has trade mark rights when it files the Complainant, and the Complainant clearly has such rights.
The Panel does not make a finding as to whether the Complainant has any unregistered trade mark rights in the term “Sungen” as the Complainant did not submit evidence sufficient to establish this. Moreover, the Complainant did not identify whether it owns any other registered trade marks incorporating the term “Sungen”. In any event, this does not alter the Panel’s finding in relation to this element. B. Rights or Legitimate Interests
A complainant must establish a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name. The Respondent must then rebut this presumption. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
Here, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Further, the Panel finds that the Respondent has failed to rebut this presumption.
Specifically, the Complainant rightly identified that while a subsidiary of the Respondent may have once had rights or legitimate interests in the disputed domain name by virtue of its subsidiary owning trade mark rights in the term and it operating under the name, Sungen Pty Ltd, after the trade mark was assigned to the Complainant and the Respondent’s subsidiary changed its name pursuant to the settlement agreement entered into between the Complainant and the Respondent’s subsidiary, the Respondent could no longer rely on these facts as a source of its rights or legitimate interests in the disputed domain name.
Therefore, at the present time, the Respondent does not have any rights or legitimate interests in the disputed domain name.
It is not relevant that the settlement agreement did not specifically provide for the transfer of the disputed domain name. The settlement agreement has effectively deprived the Respondent’s subsidiary (and therefore the Respondent) of its rights to use the SUNGEN trade mark, and that is a relevant factor when considering the second element of the Policy.
The Panel notes that the Complainant asserts that Sungen Pty Ltd (now known as Pyramid Power Group Pty Ltd), is a wholly owned subsidiary of the Respondent. The Respondent replies that Pyramid Power Group Pty Ltd is a separate entity, that the Respondent was not a party to the settlement agreement referred to above and that Sungen Pty Ltd had no power or control over the disputed domain name. In such circumstances, the Panel does not consider that any use by Sungen Pty Ltd (now known as Pyramid Power Group Pty Ltd) of “Sungen” prior to it changing its name can give the Respondent rights in the disputed domain name.
Therefore, the Panel finds that the second element of the Policy has been satisfied. C. Registered or Subsequently Used in Bad Faith
The Panel finds that the Respondent has used the disputed domain name in bad faith.
The Panel accepts that the Respondent was aware, or should have been aware, of the subject matter of the settlement agreement, that being that the Respondent’s subsidiary agreed to change its name and transfer the relevant trade mark to the Complainant. Therefore, continuing to use the disputed domain name despite this knowledge is indicative of the Respondent’s use of the disputed domain name in bad faith. The Panel finds that the Respondent’s continued use of the disputed domain name in these circumstances can only have been with a mala fide intention.
The Response suggests that the Respondent kept ownership of the disputed domain name to sell it to the Complainant after the settlement agreement was signed to assist the Respondent recover the costs of its rebranding. The Panel finds that the Respondent’s conduct falls within the definition of bad faith set out in 4(b)(i) of the Policy. This is clear given the Respondent has offered to sell the disputed domain name to the Complainant for $AUD125,000.00. The Panel is prepared to accept that this amount is far in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. Therefore, such conduct is sufficient to make a finding of bad faith on the part of the Respondent in these circumstances.
Further, the Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (2008-05), Schedule C (Eligibility and Allocation Rules for ) provides that domain names in the 2LD must be:
- an exact match, abbreviation or acronym of the registrant’s name or trademark; or
- otherwise closely and substantially connected to the registrant.
Here, the Respondent has not shown that it has a close and substantial connection to the disputed domain name. “Sungen” is not a common, descriptive, ordinary or dictionary term. This is relevant to the finding of bad faith in these circumstances.
Accordingly, the Panel finds that the Complainant has satisfied the third element of the Policy. D. Reverse Domain Name Hijacking
In view of the findings above in favour of the Complainant, the Panel makes no finding of reverse domain name hijacking. 7. Decision
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, , be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: December 22, 2011
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