ADNDRC-decisions-summary-HK-0400039

Early Procedures:

On 23 February 2004, the Complainant filed a Complaint against the Respondent with the Hong Kong office of the Asian Domain Name Dispute Resolution Centre (“ADNDRC”). On 29 March 2004, the Respondent submitted a Response to ADNDRC. On 29 April 2004, ADNDRC notified the parties of the appointment of a three-member panel consisting of Mr. Michael Hwang SC, Mr. Edward Chiasson QC and Mr. Loke Khoon Tan (the “Panel”).

Facts:

The Complainant is a company incorporated in England. Founded in Liverpool, U.K. in 1816, the Complainant began trading in China in the early 1860s. The Complainant states that it has global interests, but that its activities are concentrated in the Asia Pacific region. The Complainant states that its full name in Chinese is ‘英国太古有限公司’. The Complainant states that it has been using the name “太古” for almost 200 years in relation to its businesses all over the world. In particular, the Complainant states that it is the registered proprietor of numerous trademarks in multiple classes for the ‘太古’ mark in China, Hong Kong, Taiwan & etc.

Further, the Complainant’s wholly-owned subsidiary in Hong Kong, John Swire & Sons (H.K.) Limited has registered a total of 28 domain names, all of which contains the Complainant’s mark “太古”, such as “太古.net”, “太古中国.com” and “太古香港.com”.

The Respondent has been identified as one Chiu Tien Fu of HongQi, ShaHe, Guangzhou, Guangdong, China. The Respondent’s e-mail address has been identified in the Complaint as a8@mail.com. The type of business the Respondent is engaged in is unknown.

The Complainant has submitted his Complaint in English, whereas the Respondent has submitted his Response in Chinese. The Respondent asserts that the language of his Registration Agreement is Chinese, and that accordingly, the language of the proceedings should be in Chinese. However, in view of the fact that the working language of the Panelists is the English Language, the Panel has decided that the language of the proceedings shall be English.

Contentions:

Complainant

1. Name is identical or confusingly similar

The Complainant asserts that the Complaint is based on its registrations for the “太古” mark. The two characters “太” and “古” when used together is not a term commonly used in everyday Chinese language, but is an invented name. The Complainant submits that all the companies within the Swire group incorporate the registered trademark “太古” as part of the companies’ names. The Complainant together with its group of companies are commonly known as “太古集团” in Chinese.

The Complainant affirms that it has used the registered trademark “太古” for almost two hundred years throughout the world. It has established a unique and protectable reputation in the “太古” mark, and that the public will associate the “太古” mark exclusively with the Complainant. It is clear that the disputed domain name has incorporated the Complainant’s mark in its entirety.

2. Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

3. Respondent registered and has used the disputed domain name in bad faith

From the Respondent’s conduct that, the Respondent acquired the disputed domain name primarily for the purpose of selling or otherwise transferring the disputed domain name registration to the Complainant for valuable consideration, in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.

Respondent

The Respondent asserts that, when it registered the disputed domain name, it had not heard of the Swire Group, and that it was not aware of the existence of the “太古” trademark.

The Respondent asserts that “太古” is a commonly used term. According to the Modern Chinese Dictionary, which was compiled by the Chinese Academy of Social Studies, the meaning of the term “太古” is “the most ancient era”. A search on the term using the search engine, www.google.com, reveals a large number of results (almost 205,000 hits), the majority of which bear the meaning of “remote times” or “ancient era”. In support of its contention, the Respondent highlights numerous uses of the term in book titles, school names and company names.

The Respondent asserts that the Complainant, being a company which operates on a global scale, should have been able to register the disputed domain name within the 2 years and 10 months that have passed since the prior registration of the disputed domain name lapsed. The fact that the Complainant did not register the disputed domain name indicates that, the Complainant is simply seeking to reap the benefits of the Respondent’s labour without expending any effort of its own. The Respondent argues that, as the Complainant is an English company, the Chinese name of the Complainant is not as important as its English name, and that, as the Complainant is already the registrant of various English domain names in relation to the Swire Group, the Chinese domain name should be reserved for the Chinese people.

The Respondent’s registration of the disputed domain name was not for the purpose of using the disputed domain name in Hong Kong, the Complainant’s rights will not be affected.

Apart from the decision of John Swire & Sons Limited v Lily Zhu (WIPO Case No. D2001-1025), as mentioned above, the Respondent relies on four other cases, in support of its contention that a reputable company cannot rely on its trademarks or reputation to deprive another individual or company of its validly registered domain name. The four cases are those including Google.com v Google.com.cn, QQ.com v qq.com.cn , Paradox Security Systems Ltd. v. Paradox.com.cn and GM v Hummer.com.cn.

The Respondent submits two reasons for registering the disputed domain name. First, the Respondent previously owned the domain name eonlove.com and the Chinese name of eonlove.com was “太古之爱”, the Respondent registered the disputed domain name with the intention of using it as part of the “Tai Gu Love & Charity Web”. The Respondent’s objective in registering the disputed domain name was not for commercial gain, but to build up the “Tai Gu Love & Charity Web”. Second, the Respondent registered the disputed domain name because the Respondent’s loved one had a nickname called “太古”, and the Respondent’s loved one’s e-mail address “taigu5@hotmail.com” also uses the term “太古”, “太古” in hanyu pinyin is “taigu”. The disputed domain name had been in use and had become well known since the time the Respondent registered the disputed domain name. The Respondent contends that as the disputed domain name was used for non-profit & non-commercial purposes, and had gained a certain reputation, the Respondent had rights and legitimate interests in the disputed domain name.

Respondent registered and has used the domain name in bad faith

The Respondent submits that it had never, prior to the Complaint being filed, made any contact with the Complainant. The Respondent submits that the Complainant has been unable to adduce evidence linking the Respondent with the person purporting to have the authority to act on behalf of the Respondent. The Respondent submits that he does not have the intention of selling, renting, or transferring the disputed domain name. The Respondent submits that he intends to use the disputed domain name for his own purposes, especially since the disputed domain name is the Respondent’s only domain name in Chinese.

Findings & Reasoning

1. Identical / Confusingly Similar

In the earlier case of John Swire & Sons Limited v Lily Zhu (WIPO Case No. D2001-1025), the Complainant successfully established that the domain name “太古.com” was identical or confusingly similar to the trademark in which the Complainant had rights. Since the Complainant in this case is the same party as in that earlier case, and their trademark rights in “太古” have not lapsed, the Panel is satisfied that the relevant Internet-using public would associate the “太古” mark exclusively with the Complainant.

The Panel notes that the Complainant has adduced extensive evidence to show that it has rights in the “太古” trademark. The Complainant has registered the “太古” trademark in seven jurisdictions and a total of 28 domain names, including 太古.net, have been registered by John Swire & Sons (HK) Limited. The Panel is satisfied that the Complainant has rights in the “太古” trademark. The Panel also concludes that the disputed domain name is identical to the Complainant’s mark.

2. Rights and Legitimate Interests

The Panel notes that the Respondent who was identified in the Complaint was a person called “Qiu Shengjie”. However, the registrant was subsequently changed to a person called “Chen Qingrui”. Further, on the day the Complaint was filed, the registrant of the disputed domain name was again changed to a person called “Chiu Tien Fu”, who is the current Respondent, and who submitted the Response. Therefore, at the time the Complaint was submitted, the Complainant was not in fact addressing the current Respondent. Nevertheless, it is submitted that this should not affect the Complainant’s assertion as the Respondent’s name is different from the disputed domain name and the Respondent is not commonly known by the disputed domain name.

The Panel is not satisfied that, the Respondent has shown that, before he was notified of the Complaint, the Respondent had been using the disputed domain name in connection with a bona fide offering of goods or services. The Panel notes that the Complainant filed the Complaint on 23 February 2004, on the same day the Respondent registered the disputed domain name. The Respondent was notified of the Complaint on 28 February 2004. Accordingly, when the Respondent was notified of the Complaint, only 5 days had elapsed since the Respondent registered the disputed domain name. The Panel is of the view that the 5-day period is too short a period for the Respondent to prove that he had been using the disputed domain name in connection with a bona fide offering of goods and services. Further, the Panel notes that “太古.com” is currently inactive, and that the Respondent has not adduced any evidence to support his contention that the disputed domain name was in use or that he was preparing to use the disputed domain name in connection with a bona fide offering of goods or services.

Accordingly, the Panel concludes that the Respondent cannot rely on paragraph 4(c)(i) of the Policy to assert his rights and legitimate interests in the disputed domain name.

The Panel is not satisfied that the Respondent has shown that he himself, as an individual, is well known by the disputed domain name. Accordingly, it is not possible for the Respondent to have become well known by the disputed domain name, or, for the disputed domain name to become well known, within such a short period of time.

The Panel is of the view that the reasons given by the Respondent as to why he registered the disputed domain name to be far-fetched and insubstantial. The Respondent’s second reason for registering the disputed domain name is that his loved one is nicknamed “太古”. The Panel is of the view that such a reason is not a legitimate reason for registering the disputed domain name, and is probably an irrelevant reason.

For the above reasons, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.

3. Bad Faith

Having reviewed the relevant correspondence between the Complainant and Henry, the Panel is satisfied that Henry was indeed the authorised representative of the Respondent. The Panel finds the e-mail dated 20 February 2004 from the Complainant’s authorised representative to the Respondent, inquiring whether Henry was authorised to act on the Respondent’s behalf, especially telling. The Panel concludes that, since the Respondent failed to respond to this particular e-mail, and has not denied that Henry was his authorised representative in the sale of the disputed domain name, Henry was indeed the authorised representative of the Respondent. The Panel is also ready to infer that Henry was in fact the Respondent’s authorised representative from the fact that the reply to the e-mail dated 20 February 2004 was from Henry himself.

From the chain of correspondence between the authorised representative of Complainant and the authorised representative of the Respondent, which indicates strongly that the authorised representative of the Respondent Henry was trying to sell the disputed domain name to the Complainant, the Panel is satisfied that the Respondent had registered the disputed domain name primarily for the purpose of selling or transferring the disputed domain name registration to the Complainant, who is the owner of the “太古” trademark, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name. Having regard to the ADNDRC Decisions of www.hktdc.com (DE-0200002) and www.raineandhornecommercial.com (DE-0200006), the Panel is of the view that the offer price of US$100,000 for the disputed domain name is clear evidence that the Respondent registered and used the disputed domain name in bad faith.

In view of the fact that the disputed domain name is currently inactive, and that the Respondent has failed to adduce any evidence of use of the disputed domain name as a website, the Panel considers that such inactivity of the disputed domain name, together with the offer to sell the disputed domain name, amounts to “using” the disputed domain name in bad faith.

Decision

The Panel orders that the domain name “太古.com” be transferred to the Complainant.

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