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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Citizen Watch (China) Co., Ltd. v. Cheng Zhi Gang

Case No. D2001-1305

See Also PDF File: D2001-1305

 

1. The Parties

The Complainant is Citizen Watch (China) Co., Ltd. of Tian Zhu Lu 7,Tian Wei Two-Jie, Tian Zhu Kong Gang Gong Ye Qu, Shun Yi Qu, Beijing, 101312,China.

The Represented by Deacons, Solicitors & Notaries, AlexandraHouse, Central, Hong Kong SAR, China.

The Respondent is Cheng Zhi Gang, a Chinese citizen. His address isHe Xi Qu, Xiao Hai Di, Tianjin, 300350, China.

Respondent is not represented.

 

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is<ОчМъіЗ.com>.

The Registrar with which the domain name is currentlyregistered is Melbourne IT Ltd., of Level 2, 120 King Street, MelbourneVictoria 3000, Australia.

 

3. Procedural History

On October 26 and 29, 2001, the Complainant submitted itsComplaint through e-mail and hardcopy, respectively, with the required filingfee for a single-member panel, to World Intellectual Property Organization Arbitration and MediationCenter ( "WIPO Center"), in accordance with the Uniform Domain NameDispute Resolution Policy (the "Policy") adopted by the InternetCorporation for Assigned Names and Numbers ("ICANN") on August26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy(the "Rules"), and WIPO Supplemental Rules for Uniform Domain NameDispute Resolution Policy ("WIPO Supplemental Rules").

On November 2, 2001, WIPO Center sent via email to the Complainantan "Acknowledgement of Receipt of Complaint".

On November 5, 2001, WIPO Center sent a "Request forRegistrar Verification" via email to the Registrar requesting,confirmation that the Registrar had received a copy of the Complaint; that thedisputed domain name is registered with it; that the Respondent is the currentregistrant of such the domain name; and full contact details available underthe WHOIS database; that the Policy applies to the Domain Name; and, thecurrent status of the domain name. On November 8, 2001, the Registrarmade the reply thereto.

On November 12, 2001, WIPO Center completed a "FormalRequirements Compliance Checklist".

On November 12, 2001, WIPO Center sent the"Notification of Complaint and Commencement of AdministrativeProceedings", together with a copy of the Complaint via e-mail andfacsimile and by courier to the Respondent, and therefore to theadministrative, technical and billing contacts. A copy has also beencommunicated to ICANN and to the Registrar, via e-mail. The Notificationindicated that December 2, 2001, was the deadline to submit aResponse to the Complaint according to the requirements described in Paragraph5(a) of the Rules.

On December 3, 2001, WIPO Center sent the Ў°Notification ofRespondent DefaultЎ± to the Respondent.

On December 18, 2001, WIPO Center sent to the Complainantand the Respondent a "Notification of Appointment of Administrative Paneland Projected Decision Date", which appointed Professor Hong Xue as thepanelist of the Single-Member Panel. The Panelist submitted a Ў°Statement ofAcceptance and Declaration of Impartiality and IndependenceЎ±, and schedulingJanuary 1, 2002, as the date for issuance of the Panel decision,notifying the above pursuant to Paragraphs 6(f) and 15(b) of the Rules.

On December 18, 2001, WIPO Center transferred the casefile to the Administrative Panel, with copy of the file transmission letterbeing sent to the Complainant and the Respondent.

This Panel agrees with WIPO Center assessment andconsiders that the Complaint was properly notified to the registereddomain-name holder, the technical contact, and the administrative contact asprovided for in Paragraph 2(a) of the Rules and that formal compliance withinthe requirements of the Policy, the Rules, and Supplemental Rules was met.

The Panel has not received any further requests from theComplainant or the Respondent regarding other submissions, waivers orextensions of deadlines. There is no need as an exceptional matter, to hold anyin-person hearings as necessary for deciding the Complaint, as provided for inParagraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceedunder the customary expedited nature contemplated for this type of domain namedispute proceeding.

The language of the proceeding is English, as being thelanguage of the Domain Name Registration and Service Agreement, pursuant toParagraph 11(a) of the Rules, and also in consideration of the fact that thereis no express agreement to the contrary by the parties. In addition, pursuantto Paragraph 10 (b) of the Rules and in consideration of the circumstances ofthis administrative Proceeding, the Panel, for the purpose to ensure that eachParty is given a fair opportunity to present its case, takes into account theevidential materials provided in Chinese. 

 

4. Factual Background

4.1 The Complainant and The Trademark

The Complainant was established in China onAugust 1, 1994.

Currently, Citizen Watch Co., Ltd. has about 17,530employees and a total current asset of US$2,584,979,000.  It has a total of about 25 branches inArabia, Austria, Brazil, Canada, China, England, France, Germany, Hong Kong,India, Italy, Mexico, New Zealand, Panama, Spain, Switzerland, Taiwan, Thailand,the United States of America, and other countries and regions.

Citizen Watch Co., Ltd. registered trademark Ў°CITIZENЎ± on March 25, 1980, with the TrademarkOffice of the State Administration for Industry and Commerce of the PeopleЎЇsRepublic of China. This trademark has been renewed and is valid untiltoday. 

Citizen Watch Co., Ltd. registered the trademark Ў°ОчвџіЗЎ± (Ў°CITIZENЎ± in NormalChinese Characters) on March 25, 1980, and the trademark Ў°ОчМъіЗЎ± (Ў°CITIZENЎ± in SimplifiedChinese Characters) on September 30, 1988, with the Trademark Officeof the State Administration for Industry and Commerce of the PeopleЎЇs Republicof China. 

Citizen Watch Co., Ltd. has also used and promoted its Ў°ОчМъіЗЎ± (Ў°CITIZENЎ± in Chinese characters) trademark in the Chinese-speaking world, in particular withclocks/watches. 

In the Ў°Nationwide Major ConcernTrademark Protection ListЎ± promulgated by the PeopleЎЇs Republic of theTrademark Office of China State Administration for Industry and Commerce in1999 and 2000, the marks Ў°ОчМъіЗЎ± and Ў°CITIZENЎ± had beenlisted as the foreign marks of the major concern protection status. 

4.2 The Respondent and The Domain Name

According to the WHOIS database, the registration date ofthe domain name <ОчМъіЗ.com>was on November 30, 2000, and the expiry date is onMay 9, 2002.  Theregistrant of the domain name is now and has always been Cheng Zhi Gang.

Both the Complaint and the Reply from Registrar in respectof WIPO CenterЎЇs Request for Registrar Verification stated that the domain name<ОчМъіЗ.com> was registered onNovember 30, 2000, and expired on November 9, 2001. ThePanel, however, found through RegistrarЎЇs WHOIS database onDecember 25, 2001, that the current status of the domain name <ОчМъіЗ.com> is active and theregistration for the domain name wonЎЇt expire until May 9, 2002. 

The Respondent did not submit the Response in theProceeding. No information other than the name and address is known in respectof Respondent.

 

5. PartiesЎЇContentions

5.1 Complainant contentions may be briefly summarised as follows:

 Ў°ОчМъіЗЎ± is its famous mark in the Chinese-speakingworld especially China.

On November 30, 2000, the Respondent registered the domainname <ОчМъіЗ.com> (Ў°CITIZENЎ± in Chinese characters) under his own name.  This domain name <ОчМъіЗ.com>is in all material aspects identical to the trademark and name of theComplainant.

It is noted from the Technical ContactЎЇs address stated inthe Whois search dated February 1, 2001, that the Technical Contactis based in China and therefore must be aware that Ў°ОчМъіЗЎ± is afamous mark in China.  Further theRespondent is not a licensee of the Complainant, nor is the Respondentotherwise authorized to use the ComplainantЎЇs mark.  The Complainant is not aware of any other entity who may usethe mark Ў°ОчМъіЗЎ± in a domain name legitimately in conductingits own business without infringing the rights of the Complainant.

The Complainant isaware of no connection whatsoever between the Respondent and the ComplainantЎЇstrademark Ў°ОчМъіЗЎ±, nor any reason why the Respondent has everbeen legitimately known or identified in any way by that mark.  The Respondent has no rights or legitimateinterest in respect of the domain name <ОчМъіЗ.com>.

Further, theRespondent has not developed a website using the domain name <ОчМъіЗ.com>, and the domain name <ОчМъіЗ.com> was unable to resolve into a valid IPAddress.

Deacons, on behalf of the Complainant, sent a letter bye-mail to the Respondent on March 2, 2001, requested the Respondentto transfer the disputed domain name to the Complainant. As there was no replyfrom the Respondent, the same letter was sent by courier and by fax to the Respondenton April 6, 2001. Subsequent to this letter, several telephone calls were made to theRespondent but he still could not be reached.

On May 27, 29 and 31 and on June 1, 2001, Deacons, onbehalf of the Complainant, received 5 e-mails in Chinese from liurunxia@yeah.net.   These letters were signed underЎ°TianjinЎ±, Ў°Tianjin Xiao ChengЎ± and Ў°Xiao ChengЎ±.  Tianjin is the city where the Respondent resides.  Ў°Xiao ChengЎ± means Ў°Little ChengЎ±,which was a customary way the Respondent called himself.  According to the e-mail datedMay 29, 2001, the Respondent had asked the Complainant to pay himUS$500,000 in order for him to transfer the domain name <ОчМъіЗ.com> tothe Complainant.  The Respondentclaimed to have registered the domain name <ОчМъіЗ.com> asa means of protest against the Japanese because he hated Japanesecompanies.  The Respondent furtherstated that he also owned other Japanese companiesЎЇ domain names which he waswilling to transfer if sufficient money was paid to him. 

The Respondentregistered and used the domain name <ОчМъіЗ.com> inbad faith for the following reasons:

(a) The Respondent has registered or acquired the domain name primarily for the purposeof selling the domain name registration to the Complainant as the owner of theЎ°ОчМъіЗЎ± trademark for a valuable consideration in excess of the out-of-pocketcosts directly related to the domain name.  Likewise, the Respondent would expect a profit from the saleof <ОчМъіЗ.com> back to its trademark owner.

(b) The Respondent has registered or acquired the domain name as a means of protest against theJapanese because he claims that he hates Japanese companies.

(c) The Respondent has engaged in a pattern of registering trademarks or service marks as domain namesincluding the domain name at issue in order to prevent the owners of such marksfrom registering the domain names to reflect their marks.

(d) It follows therefore that the Respondent has no intention to use or demonstratepreparations to use the domain name or a name corresponding to a domain name inconnection with a bona fide offering of goods and services.

5.2 Respondent did not file any Response.

 

6. Applicable Dispute

6.1 This dispute is one to which the Policy applies.  By registering the domain name, Respondent accepts thedispute resolution Policy adopted by the Registrar. 

6.2 To succeed in its Complaint, Complainant must show that each of the conditions ofParagraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trademark or service markin which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the domain name;  and

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

 

7. Discussion and Findings

7.1 Identical or Confusingly Similar Trademarks

Pursuant to Paragraph 4(a) of the Policy, Complainant must prove that the domain name is identical orconfusingly similar to a trademark or service mark in which the Complainant hasrights.

In line with such provision, the Complainant must prove two aspects,i.e. it enjoys the trademark right; and the domain name in question isidentical with or similar to its trademark or service mark.

The Panel, in the first place, holds that the domain nameregistered by Respondent is confusingly similar to the trademark Ў°ОчМъіЗЎ±.

The Panel, in the second place, holds that the Complainantenjoys the right over the trademark Ў°ОчМъіЗЎ±,though it is not the trademark registrant in China.

The Panel notices that the Complaint mentioned both theComplainant Ў°Citizen Watch (China) Co., Ltd.Ў± and another company Ў°Citizen Tokei Kabushiki KaishaЎ± (also known as CitizenWatch Co., Ltd.). The Complainant provided its business license as the evidence(See Annex 4 to the Complaint; it is in Chinese and no English translation).

The Panel finds from thebusiness license of the Complainant that it was a Ў°Chinese-Foreign Joint VentureЎ±(ЦРНвєПЧКѕ­УЄ) approved by the State Administration for Industryand Commerce of the PeopleЎЇs Republic of China onAugust 10, 1994. The Complainant and Citizen Tokei Kabushiki Kaisha (also knownas Citizen Watch Co., Ltd.) are two independent enterprises. Citizen TokeiKabushiki Kaisha (also known as Citizen Watch Co., Ltd.) was the registrant ofthe trademarks Ў°CitizenЎ±,  Ў°ОчвџіЗЎ± and  Ў°ОчМъіЗЎ±in China.

Although the Complainant is not the registrant of thetrademark  Ў°ОчМъіЗЎ± in China, the Panel holds that there should be arelationship of trademark licensing between the Complainant and the trademarkregistrant Citizen Tokei Kabushiki Kaisha (also knownas Citizen Watch Co., Ltd.). Under the Trademark Law of PeopleЎЇs Republic ofChina, any trademark registrant may, by signing a trademark license agreement,authorize other persons to use the registered trademark. A trademark licenseagreement does not need to be approved by the competent authority of China.

The Complainant was established with the authorization andinvestment of Citizen Tokei Kabushiki Kaisha (also known as Citizen Watch Co.,Ltd.), and the Complainant, as the Chinese subsidiary, has close connectionwith Citizen Tokei Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.).The Panel also notices that the letter by e-mail sent by Deacons to theRespondent dated March 2, 2001, was on behalf of both Ў°Citizen Watch Co., Ltd.Ў± and the Complainant (SeeAnnex 14 of the Complaint; the letter is in Chinese and no Englishtranslation), which shows that the Complainant was authorized to stand forЎ°Citizen Watch Co., Ltd.Ў± in respect of trademark protection matters in China.Based on these fact, it is fair to presume that the Complainant has beenlicensed in Chinese market to use and protect the registered trademark Ў°ОчМъіЗЎ± for Citizen TokeiKabushiki Kaisha (also known as Citizen Watch Co., Ltd.).

The Panel therefore holds that the domain name in questionis confusingly similar to the trademark in which the Complainant has the right.

7.2     Legitimate Right or Interest

The Complainant contended that the Respondent had no legitimateright or interest. Where, as here, the Complainant has raised a prime facie presumption of theRespondent's lack of such right or interest, and Respondent has failed to rebutthat presumption, the Panel is entitled to accept Complainant's assertion. Asprovided for by Paragraph 14 of the Rules, the Panel may draw such inferencefrom the RespondentЎЇs default, as it considers appropriate.

The Panel therefore finds that Complainant has established thatRespondent has no legitimate right or interest in the domain name.

7.3 Use and Registration in Bad Faith

A non-exhaustive list of what constitutes bad faith registration anduse is set out in Paragraph 4(b) of the Policy. The Complainant basicallyrelies upon 4(b)(i) and (ii), which read as follows:

For the purposes of Paragraph 4(a)(iii), the followingcircumstances, in particular, but without limitation, if found by the Panel tobe present, shall be evidence of the registration and use of a domain name inbad faith:

(i) circumstances indicating that the respondent has registered or the respondent has acquiredthe domain name primarily for the purpose of selling, renting, or otherwisetransferring the domain name registration to the complainant who is the ownerof the trademark or service mark or to a competitor of that complainant, forvaluable consideration in excess of the respondentЎЇs documented out-of-pocketcosts directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of thetrademark or service mark from reflecting the mark in a corresponding domainname, provided that the respondent has engaged in a pattern of such conduct.

The Panel finds that, in the Ў°Nationwide MajorConcern Trademark Protection ListЎ± promulgated by the Trademark Office of theState Administration for Industry and Commerce of the PeopleЎЇs Republic ofChina in 1999 and 2000, the marks Ў°ОчМъіЗЎ± and Ў°CITIZENЎ± hadbeen listed as the foreign marks of the major concern protection status. The various promotional materials provided by the Complainant alsoshow that the trademarks Ў°CitizenЎ± and  Ў°ОчМъіЗЎ± had been widely promoted in theworld market including China.

The Respondent of this case registered the domain name  <ОчМъіЗ.com>but has made no active use of it.  The second-level of the domain name isfamous in China and, as the Panel has already found, the Respondent has norights or legitimate interests in respect of it. 

Considering the emails received by Deacons, on behalf of the Complainant on May 27, 9 and 31 andJune 1, 2001, from the Respondent, the Panel holds that theRespondent registered the domain name with the knowledge that Ў°ОчМъіЗЎ± was the trademark of the Japanese company (Ў°Citizen WatchCo., Ltd.Ў±), and the Respondent registered such domain name for the purpose ofprotesting against the policies of Japanese government, rather than for his ownuse.

According to the e-mail dated May 29, 2001, the Respondenthad asked the Complainant to pay him US$500,000 in order for him to transferthe domain name <ОчМъіЗ.com> to the Complainant, and stated that Ў°althoughthe Japanese are good businessmen, my price will not change.Ў±

In consideration ofsuch request from the Respondent and other circumstances, the Panel holds thatthe Respondent had the bad faith for registering the domain nameprimarily for the purpose of selling the domain name registration to theComplainant as the right owner of the Ў°ОчМъіЗЎ± trademark for a valuable consideration inexcess of the out-of-pocket costs directly related to the domain name. 

In the e-maildated May 29, 2001, the Respondentstated, Ў°I have some other domain names(besides Ў°ОчМъіЗ.comЎ±); (and)if the Japanese want them, please contact me.Ў± The Complainant therefore contended that the Respondent had the bad faithfor engaging in a pattern of registering trademarksor service marks as domain names including the domain name at issue in order toprevent the owners of such marks from registering the domain names to reflecttheir marks. However, the Complainant failed to provide any evidence to provethat the Respondent had engaged such a pattern of conduct. The Panel,therefore, does not regard that the Respondent had the bad fait of that type.

The Panel therefore concludes that the Respondent had thebad faith provided in Paragraph 4(a)(iii) of the Policy.

 

8. Decision

In light of the foregoing findings, namely that the domainname is confusingly similar to a trademark in which the Complainant has rightsand that the Respondent has no rights or legitimate interests in respect of thedomain name and that the domain name was registered in bad faith, the Complaintsucceeds.

Pursuant to Paragraphs 4(i) of the Policy and Paragraph 15of the Rule, the Panel directs that the domain name <ОчМъіЗ.com>be transferred to the Complainant.

 

 


 

Hong Xue
Sole Panelist

Dated:  January 1, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1305.html

 

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