WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zippo Manufacturing Company v. Kuangwen WU and Duan Yueh LU
Case No. DWS 2000-0001
1. The Parties
The Complainant is Zippo Manufacturing Company, a Pennsylvania corporation with its principal place of business at 33 Barbour Street, Bradford, Pennsylvania 16701, USA. It is represented by Mr. Paul I. Perlman of Hodgson, Russ, Andrews, Woods & Goodyear LLP, Attorneys of Buffalo, New York, USA.
The Respondent is Kuangwen WU, or Duan Yueh Lu or Liu. These are thought to be the same person.
According to a representative of the Registrar, WorldSite. WS, the contact information for the Respondent is as follows:
Registrant’s Name: Kuangwen Wu
Address: 20302 Pacifica Drive, Cupertino, CA 95014
Telephone Number: (408) 505-9196
Fax Number: Not provided
E-mail address: Kevin_wu@yahoo.com
In addition, Respondent has provided an address to Complainant’s attorney, Paul I. Perlman. That address is: 9F, #96, Lu-Jiang St. Lu-Jou, Taiepi, Taiwan.
WorldSite .WS has indicated to WIPO that the Registrant is Duan Yueh Lu or (Liu). Mr. Lu is at the same address and has the same e-mail address as Mr. Wu and it is believed that they are the same person. In an e-mail from WorldSite to WIPO dated July 26, 2000, WorldSite has indicated that Mr. Wu and Mr. Lu are the same individual, as a person registering a domain name may enter a different name as registrant.
The Respondent is not represented by counsel and has filed no Response.
2. The Domain Name and Registrar
The domain name at issue is "zippo.ws". The domain name is registered with World Site WS c/o Global Domain International Inc., 701 Palomar Airport Road, Suite 300, Carlsbad, California 92609, U.S.A. ("the Registrar"). The Registrar is the registration authority for the .ws top level domain.
3. Procedural History
A complaint submitted by Zippo Manufacturing Company was received July 10, 2000, (electronic copy) and July 12, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").
On July 19, 2000, a request for Registrar verification was transmitted by WIPO Center to the Registrar, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with Worldsite .WS.
Confirm that the person identified as the Respondent is the current registrant of the domain names.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated July 26, 2000, the Registrar advised WIPO Center as follows:
The Registrar had received a copy of the Complaint from the Complainant.
The Registrar is the Registrar of the domain name registration "zippo.ws".
Duan Yueh Lu is shown as the "current registrant" of the domain name "zippo.ws".
The administrative technical, billing and zone contact is Duan Yueh Lu of 9F, #96, Lu-Jiang St., Lu-Jou, Taipei 95014, Taiwan.
The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from the Registrar indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
On July 26, 2000, (by email) and on July 28, 2000, (by hard copy) the Complainant submitted an amended complaint.
Having verified that the amended Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on July 29, 2000, transmitted by post/courier and by email a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to ICANN and to the Registrar.
The Complainant elected to have its Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by August 18, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.
On August 17, 2000, WIPO Center received an email from Duan Yueh Liu in Taiwan stating in effect that the Complainant did not cite the correct respondent. The email stated that Soe Min of P O Box 1352, GPO, Myanmar Ports and Telecommunication, Yangon, Myanmar is responsible for issues regarding "zippo.ws" including "transfer ownership".
On the same date Soe Min sent an email to WIPO Center stating that he rented the domain name form Duan Yueh Liu. He also said he lived in Burma (Myanmar) and could not understand English. He wanted a Burmese translation.
On the same date, the Complainant’s attorney emailed WIPO Center pointing out that Duan Yueh Liu is still the registrant and that the Registrar could not permit a transfer whilst an ICANN proceeding is pending.
On August 18, 2000 WIPO Center made the following procedural determination:
"(1) The registrant of record for the domain name subject to the Complaint, as confirmed by the registration authority, is Duan Yueh Lu. The Center’s Notification of Complaint of July 29, 2000 (addressed to Duan Yueh Lu) was therefore addressed to the correct Respondent. If there is an arrangement between Duan Yueh Lu and Soe Min according to which the latter has been made in fact responsible for all issues regarding the domain name, this is a matter between the parties to that arrangement and does not affect the fact that the domain name is registered in the name of Duan Yueh Lu, which is the relevant point for purposes of notifying the complaint.
(2) According to Section 11 of the Rules for Uniform Domain Name Dispute Resolution Policy, 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). The language of the registration agreement for the domain name subject to the Complaint appears to be English. Without prejudice to the question of whether the message of Soe Min is admissible in this case (as she is not a party to these proceedings), the Center is not aware of any agreement between the parties that the proceedings are to be conducted in a language other than English; neither has it been argued that the registration agreement specifies another language for the proceedings.
In light of the above the Center hereby confirms that the Response is due today".
This determination was emailed to Kevin_wu@yahoo.com and produced a reply from the Respondent Duan Yueh Liu (not Lu). He stated his inability to reply in English and that he would contact Soe Min.
On August 18, 2000, the Respondent sent to WIPO Center a copy of his reply dated 23 June, 2000, to the Complainant’s "cease and desist" communication. Essentially, he maintained that "zippo" was only a USA or Canadian trademark. He did not intend to violate the Complainant’s rights but did not want to lose his either. He again noted his inability to express himself adequately in English and suggested a reply in Chinese.
Later on August 18, 2000, Soe Min, claiming to be the legal owner of the "zippo.ws" domain name emailed WIPO Center stating that Burma has no Internet only email. Therefore, he could not read the WIPO website: he requested a letter in Burmese and attached 3 pages in Burmese script. He said that "zippo" had not been registered with the Burmese government company registration and copyright department and that most Burmese did not know "zippo".
On September 1, 2000, the WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On September 1, 2000, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to the WIPO Center the statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On September 5, 2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on September 8, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by September 18, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The Panel agrees with the procedural determination to the effect that the correct Respondent is Duan Yueh Lu or Liu (also know as Kuangwen Wu) and not Soe Min. The Panel proceeds on the basis that no proper Response has been filed by the Respondent.
4. Factual Background
The Complainant is the owner of the trademark "zippo" registered in the United States Patent and Trademark Office. It has been the registered owner of the mark zippo for various items since 1933. The Complainant has used the mark "zippo" continuously for many years to identify its products which it sells and distributes worldwide. It started with pocket lighters in 1933 but has widened its coverage to all kinds of accessories, sporting goods, and useful items. It has trademark coverage in the USA for the name zippo in respect of its numerous products. In addition, the Complainant has 40 federally registered trademarks in Taiwan.
On April 28, 2000, the Respondent registered the disputed domain name. It had no right or license from the Complainant to do so. The Complainant issued a "cease and desist" letter on June 20, 2000. The Respondent declined to transfer the domain name for $75 as offered, but said he would consider $50,000. A printout of the relevant page shows the domain was linked to a page "under construction" as at July 6, 2000. On June 20, 2000 no Internet site was called up. An affidavit from the Complainant’s attorney attests to these facts.
A search by the Complainant shows that the Respondent has registered a number of famous trademark names with the Registrar such as "DKNY.com" the trademark name of film producer George Lucas and [ieee.com] the name of the Institution of Electrical and Electronic Engineers.
5. Parties’ Contentions
The Complainant submits that the only possible conclusion must be that the Respondent has registered and is using "zippo" in bad faith. The offer to sell the domain name in which the Respondent has no legitimate interest for $50,000 is also evidence of bad faith.
The Respondent has made no submissions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
That the Respondent has no rights or legitimate interests in respect of the domain name; and
That the domain name has been registered and is being used by the Respondent in bad faith.
The domain name "zippo.ws" is obviously identical to the Complainant’s mark. The Panel so decides.
Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain names at issue. The Respondent has never suggested to the contrary.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), 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:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel considers that the Respondent has registered and used the disputed domain name "zippo.ws" in "bad faith" for the following reasons:
(a) "zippo.ws" is so obviously connected with well-known products that its very use by someone with no connection with any zippo product suggests opportunistic bad faith.
(b) The Respondent’s offer to sell the name to the Complainant is powerful evidence of bad faith: see the decisions in WIPO Center cases of Harrods Ltd. v Boyd (Case No. D2000-0060), China Ocean Shipping (Group) Co. Ltd. v Cao Shan Hui (Case No. D2000-0066) and ViewSonic Corporation v Informer Associates Inc (Case No 2000-0852).
The present situation is similar to that in Educational Tertiary Service v TOEFL (WIPO Case D2000-0044) where the learned Panelist said:
"The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark. This value is grounded in the right of Complainant to use its mark to identify itself as a source of goods or services. Respondent has failed to establish any legitimate domain name-related use for Complainant’s trademark, in a context in which such legitimization might be possible. The Respondent having failed to present any such justification, the Panel may reasonably infer that Respondent neither intended to make nor has made any legitimate use of Complainant’s trademark in connection with the [domain name] at issue."
Accordingly, for all the various reasons discussed above, the Panel finds that the domain name "zippo.ws"has been registered and is being used by the Respondent in bad faith..
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists worldwide under the ICANN Policy provides a fruitful source of precedent. Blatant cybersquatting of which this is but the most recent example is routinely disallowed.
For the foregoing reasons, the Panel decides:
(a) that the domain name registered by the Respondent is identical to the trademark to which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the Respondent’s domain name has been registered and is being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name "zippo.ws" be transferred to the Complainant.
Hon Sir Ian Baker QC
Dated: September 12, 2000