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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tamglass Ltd. Oy v. Shenyang Tai Mei Steel Glass Fixture Ltd.

Case No. D2005-0200

 

1. The Parties

The Complainant is Tamglass Ltd. Oy, Tampere, Finland, represented by Leitzinger Oy, Finland.

The Respondent is Shenyang Tai Mei Steel Glass Fixture Ltd., Shenyang, Liaoning, China.

 

2. The Domain Name and Registrar

The disputed domain name <cntamglass.com> is registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the  “Center”) on February 22, 2005. On February 22, 2005, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On February 22, 2005, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on February 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2005. The Response was filed with the Center on March 18, 2005.

The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 24, 2005. 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 the owner of the trademark TAMGLASS, which has been registered worldwide in countries including China, Spain, Sweden, Germany, Japan, United States of America, Hong Kong SAR of China, Italy, United Kingdom of Great Britain and Northern Ireland, Finland, Argentina, Chile and Russian Federation. The earliest trademark registrations date from 1989 (US trademark registration no. 1693992, dated April 17, 1989; UK trademark registration no. 1376752, dated March 10, 1989, and Finnish trademark registration no. 110281, dated January 13, 1989). The trademark was registered in China on 27 December 1999 (registration no. 1554873).

Complainant has registered various domain names including <tamglass.com>.

Respondent registered the domain name <cntamglass.com> on July 29, 2002.

 

5. Applicable Rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

“(i) the domain name at issue is identical or confusingly similar to a trademark in which the Complainant has rights; and

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

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

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interests to the domain name for the purpose of Paragraph 4(a)(ii) above.

 

6. Parties’ Contentions

A. Complainant

Complainant is a Finnish company, established in 1970, with manufacturing units in Finland, the US, Brazil and China, and sales and service offices worldwide. Complainant is a world leader in safety glass machines with over 1700 production lines delivered to more than 70 countries. Complainant is the owner of the trademark TAMGLASS, registered in various countries worldwide. The trademark TAMGLASS enjoys a good reputation in the field of glass industry.

Grounds for the Complaint are:

1. that the domain name <cntamglass.com> is confusingly similar to Complainant’s trademark TAMGLASS. The dominant part of the domain name <cntamglass.com> is ‘tamglass’. The prefix ‘cn’ relates to China, being a common abbreviation of China. The suffix ‘tamglass’ is identical to Complainant’s trademark.

2. Complainant states that Respondent has no rights or legitimate interests in respect of the domain name <cntamglass.com> as provided in Paragraph 4(a)(ii) in connection with Paragraph 4(c) of the Policy. Respondent does not hold any trademarks to the name ‘tamglass’. Respondent is not known by the name cntamglass.

Respondent is a competitor in the same line of business as Complainant and therefore knew or should have known of Complainant’s trademark TAMGLASS.

3. Complainant states that the domain name <cntamglass.com> was registered and is used in bad faith as provided in Paragraph 4(a)(iii) in connection with Paragraph 4(b) of the Policy. Respondent is involved in the same line of business as Complainant. Respondent has registered the contested domain name in order to prevent the Complainant from reflecting their trademark in a corresponding domain name and disrupting the business of a competitor as described in Paragraph 3(b)(ix)(iii) of the Rules.

By using the domain name at issue Respondent effects an erroneous conception that Respondent is an importer or retailer dealer of Complainant in China. The domain name at issue easily gives a false image as the prefix ‘cn’ relates to the common abbreviation of China and the suffix ‘tamglass’ is identical to Complainant’s trademark. Respondent is a Chinese company and its website is directed at its Chinese customers i.e. Respondent’s sales network covers areas in China, in which areas Complainant is also active.

Furthermore, Respondent is also using Complainant’s other registered trademark HTF in the website found under the domain name at issue.

4. Respondent is intentionally intending to attract Internet traffic for commercial gain by using the domain name at issue. Respondent is also abusing the goodwill of Complainant’s trademark TAMGLASS.

B. Respondent

Respondent is a Chinese company which integrates research, development, process and production of safety glass. Respondent registered the domain name at issue after taking the following into consideration:

- ‘cn’ indicates that the company is a Chinese company;

- ‘tam’ is an abbreviation for ‘tai mei’ which is part of the full name of the company, namely Shenyang Tai Mei Steel Glass Fixture Ltd;

- ‘glass’ indicates that the line of business of the company is processing tempering glass.

Respondent states that its subsidiaries Tempering Glass Co. Ltd, Curtain Wall and Network Shelf Engineer Co. Ltd. and Tempering Glass Equipments Co. Ltd. became well-known through the domain name at issue. According to Respondent its website clearly indicates that it does not have the intention to disrupt Complainant’s business. It is also evident that the website under the domain name at issue does not belong to Complainant.

Respondent has registered and used the domain name at issue for more than two years prior to Complainant filing a Complaint. This clearly shows that Respondent never intended to sell, rent or transfer this domain name to Complainant to gain extra value.

 

7. Discussion and Findings

Complainant must provide evidence of all elements of Paragraph 4(e) of the Policy.

A. Trademark Rights

Complainant has provided sufficient evidence of its rights to the trademark TAMGLASS.

B. Identical or Confusingly Similar

The domain name <cntamglass.com> is confusingly similar to Complainant’s trademark TAMGLASS. The suffix “.com” indicates that the domain name is registered in the “.com” gTLD. As Respondent confirms, the prefix ‘cn’ refers to China. The dominant element of the domain name at issue is ‘tamglass’. This element is identical to Complainant’s trademark TAMGLASS. Therefore the Panel finds that the domain name at issue is confusingly similar to Complainant’s trademark TAMGLASS.

C. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, Respondent may demonstrate that it has a right or a legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii), inter alia, by providing evidence of any of the following circumstances:

“(i) before any notice to you 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 (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 are making a legitimate non commercial 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.”

The domain name <cntamglass.com> has been used by Respondent to promote three of its subsidiaries which are active in the field of safety glass. Complainant is a central player in the same market, also in China, in which country Respondent operates its businesses.

Respondent has neither provided evidence that it is a reseller of Complainant’s products nor that Complainant has licensed Respondent to use the trademark TAMGLASS. Even if Respondent would have been an authorized retailer of Complainant’s products, this in itself is not sufficient to give Respondent a right to use the TAMGLASS trademark as a domain name. As was consistently held by panels in numerous other UDRP decisions, a licensee or a dealer, agent or distributor of products of the trademark owner or of compatible products does not per se have a right to a domain name which includes that trademark. See e.g. Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000); Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101 (October 18, 2001); Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292 (January 20, 2002).

Respondent has failed to provide evidence for his statement that he is commonly known by the domain name, as Respondent states in the Response. The fact that almost three years have lapsed since the registration of the domain name is in itself insufficient for that purpose. Respondent has suggested that it chose ‘tamglass’ as part of the domain name at issue because ‘tam’ would be an abbreviation for ‘tai mei’, which is part of the company name, and ‘glass’ is the field in which it is active. The Panel does not find this suggestion very convincing. In the English language, a logical abbreviation of ‘tai mei’ would be ‘tm’, not ‘tam’. Furthermore, Respondent has not provided any evidence (such as brochures, letterhead or website prints) which shows that it uses ‘tam’ as an abbreviation for (part of) its business.

In light of the foregoing, the Panel finds that Complainant has provided sufficient evidence that Respondent does not have a right or legitimate interest in the domain name.

D. Registered and Used in Bad Faith

Complainant is relying on Paragraph 4(b)(iv) of the Policy, which provides that sufficient evidence of bad faith may consist of:

“(iv) By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that Complainant has provided sufficient evidence in this respect. Complainant is the proprietor of three Chinese trademark registrations of TAMGLASS, the earliest of which dates back to December 27, 1999. Respondent has not denied that Complainant is active in the Chinese market in the field of safety glass, where Respondent is also active, nor that it was aware of and knew the TAMGLASS trademark when registering the domain name <cntamglass.com> on July 29, 2002. In view of these facts, the Panel concludes that Respondent has deliberately included Complainant’s trademark in the domain name at issue in order to attract business. Furthermore, by its use of the domain name at issue Respondent has created the (incorrect) impression of endorsement by, or affiliation with, Complainant. Thus, Respondent’s use of the domain name may create the incorrect impression that Respondent is either a distributor or a subsidiary of Complainant or, at the very least, that Complainant has approved Respondent’s use of the domain name at issue.

The public that is familiar with Complainant’s trademark - which is the public most likely to search for the website - will expect to find under the domain name <cntamglass.com> a website belonging to Complainant or its Chinese subsidiary. The fact that Respondent is using this domain name for its own website will, therefore, misleadingly divert customers to Respondent’s website. This further proves that Respondent has intentionally used the goodwill of Complainant’s trademark to create traffic to its website operating under the domain name at issue. (See also e.g. Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 (September 18, 2000))

The Panel therefore concludes that there is sufficient evidence that Respondent’s registration and use of the domain name <cntamglass.com> is in bad faith.

 

8. Decision

On the basis of the foregoing, the Panel decides that Complainant has provided the required evidence for the requested order transferring the domain name from Respondent to Complainant. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the domain <cntamglass.com> be transferred to the Complainant.


Wolter Wefers Bettink
Sole Panelist

Dated: April 7, 2005

 

Источник информации: https://internet-law.ru/intlaw/udrp/2005/d2005-0200.html

 

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