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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tai Ping Limited v Zhang Xiaolei

Case No. D2007-1219

1. The Parties

The Complainant is Tai Ping Limited, Tortola, British Virgin Islands, represented by Baker & McKenzie LLP, United States of America.

The Respondent is Zhang Xiaolei, Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name is <taipingcarpet.com> which is registered with HiChina Web Solutions Limited (“HiChina”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2007 by email and on August 20, 2007 in hardcopy. On August 20, 2007, the Center transmitted by email to HiChina a request for registrar verification in connection with the disputed domain name. On August 21, 2007, HiChina 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 27, 2007. In accordance with the Rules, the due date for Response was September 16, 2007. The Respondent did not submit a formal Response. Accordingly, the Center notified the Respondent’s default on September 17, 2007.

The Center appointed Tan Tee Jim, S.C. as the sole panelist in this matter on October 2, 2007. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is in the business of selling custom carpets and rugs. It was founded in 1956 with the goal of preserving China’s centuries-old carpet making traditions. Since then, it has operations in over 100 countries and has achieved global sales of over $100 million. Its carpets have been purchased by prestigious clientele such as Buckingham Palace, Windsor Castle, the Royal Palace of Jordan, Mandarin Oriental, the Ritz and Pebble Beach Lodge and have received widespread publicity in such publications as Wall Street Journal, the New York Times, and House and Garden.

The Complainant’s related companies include

(1) Tai Ping Carpets International Limited, which is a holding company listed on the Hong Kong Stock Exchange;

(2) Tai Ping Carpets Limited, which is a Hong Kong company; and

(3) Tai Ping Carpets International Trading (Shanghai) Company Limited, which is based in Shanghai, China.

The Complainant owns several trademark registrations in several countries for marks incorporating the term TAI PING (“TAI PING trademarks”) in respect of carpets and rugs. It also owns and operates a website at “www.taipingcarpets.com” which contains information concerning the Complainant as well as its products and services.

The Respondent registered the disputed domain name on April 4, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(1) its TAI PING trademarks have become well-known and famous due to longstanding use, exponential growth, large base of clientele and reputation for high-quality and luxurious carpets and rugs;

(2) the disputed domain name also comprises TAI PING and is therefore confusingly similar in sound and appearance and conveys the same commercial impression as the Complainant’s TAI PING trademarks, especially as the term “tai ping” is the more distinctive and dominant element whereas “carpet” is merely the generic term for the products in question;

(3) the Respondent’s use of the term “tai ping” in the disputed domain name diverts and routes Internet user traffic to its website by leading users to believe that the website is somehow related to or sponsored by the Complainant, thus resulting in initial interest confusion and a likelihood of confusion on the part of Internet users;

(4) instances of actual consumer confusion between the Complainant’s and the Respondent’s websites have in fact occurred;

(5) it has neither licensed nor authorized the Respondent to use its TAI PING trademarks or any trademark incorporating the term TAI PING; and

(6) the disputed domain name was registered and is being used in bad faith by reason of, amongst others,

(a) the Respondent’s misrepresentation in its website that “[Tai Carpet] is … a fully owned subsidiary of the publicly listed Tai Ping Carpet International”;

(b) the use of a picture on its website of the Complainant’s manufacturing facilities in China; and

(c) the use of logos which are substantially similar to the Complainant’s.

B. Respondent

The Respondent has not filed a formal Response, but submitted multiple email communications stating that he registered the domain name on the “first come, first served” basis as the domain name was available for registration. He also stated that he does not infringe the Complainant’s IP rights and that should anyone be interested in the domain name, it would be for sale.

6. Discussions and Findings

A. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to paragraph 11 of the Rules, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant has filed its Complaint in English and made a request in the Complaint that the language of the proceeding be English, citing the following reasons in support:

(1) the Complainant’s working language is English and documents would have to be prepared in English and Chinese for the proceeding, which would lead to additional expenses for the Complainant;

(2) the Complainant has already incurred and will incur large expenses as a result of the Respondent’s infringing activities;

(3) all the pages of the Respondent’s website are completely in English, which evidences the Respondent’s proficiency in English; and

(4) the term “carpets” in the Respondent’s website is in English, which suggests that it targets English-speaking individuals.

Under paragraph 11(a) of the Rules, the Panel has the discretion to determine the language of the proceeding, having regard to the circumstances of the proceeding. In the present case, having regard to all relevant circumstances, including the fact that

(a) the Complaint was filed in English;

(b) the disputed domain name is in English;

(c) the website bearing the disputed domain name is in English;

(d) the Respondent communicated with the Center in English on one occasion;

(e) the Respondent did not respond to the Center’s Chinese request to indicate that it would experience language difficulties if English were to be the language of the proceeding; and

(f) the Respondent has not filed a Response.

The Panel decides that the language of this administrative proceeding is English and that the decision of the Panel will be rendered in English.

B. Elements of the Policy

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present in order to succeed in the Complaint:

(1) the disputed domain name is identical with or confusingly similar to a trademark in which the Complainant has rights; and

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

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

In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, the Panel shall, in the absence of exceptional circumstances, decide the dispute based on the Complaint.

(1) Identical or Confusingly Similar

The Complainant has provided prima facie evidence of its registrations in relation to the TAI PING trademarks in class 27 (covering carpets and rugs) in several countries, such as Australia, Canada, France, Germany, Hong Kong, SAR of China, Japan, Singapore as well as China where the Respondent is located. On the basis of these registrations, the Panel is satisfied that the Complainant has rights in the trademarks.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s TAI PING trademarks. The disputed domain name incorporates the term “tai ping” which is the more distinctive and dominant element in the domain name as compared to the word “carpet” which is merely descriptive of the products in question. In this regard, it has been stated in Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493 that, generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. In the present case, the disputed domain name is not only substantially similar to the registered TAI PING trademarks in terms of sound and appearance but also in terms of giving the impression that it is connected or related to the Complainant’s carpets and rugs by the use or inclusion of the word “carpet” in the domain name.

The Panel therefore finds for the Complainant in relation to the first element.

(2) Rights and Legitimate Interests

According to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following:

(1) the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute; or

(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(3) the Respondent is 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 Respondent has chosen not to formally respond and the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interest in the disputed domain name.

This aside, the Panel finds that the Respondent indeed has no rights or legitimate interests in the disputed domain name, for the following reasons:

(1) The Complainant has provided evidence of its worldwide registrations and use of its TAI PING trademarks in relation to carpets and rugs and consequently, in the absence of contrary evidence from the Respondent, the said trademarks and the term “tai ping” are not those that traders could legitimately adopt other than for the purpose of creating an erroneous impression of an association with the Complainant and/or its products;

(2) There is no indication that prior to the registration of the disputed domain name, the Respondent is commonly known by the term “tai ping” as an individual, business or organization or has been using the term in connection with a bona fide offering of goods or services;

(3) The Respondent has not provided any evidence of legitimate use of the disputed domain name or reasons to justify the choice of domain name and/or the term “tai ping” in the domain name; and

(4) There is also no evidence that the Complainant has licensed or otherwise authorized the Respondent to use any of its TAI PING trademarks or to apply for or use any domain name incorporating the term “tai ping”.

Accordingly, the Panel finds for the Complainant in relation to the second element.

(3) Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely,

(1) circumstances indicating that the Respondent has registered or have acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(2) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(3) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) the Respondent has, by using the domain name, intentionally attempted to attract, for commercial gain, Internet users to his website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.

Based on the case file, the Panel is satisfied that the circumstances referred to in paragraph 4(b) of the Policy are applicable to the present case. Specifically, the Complainant has a worldwide reputation in its TAI PING trademarks in respect of carpets and rugs and, in particular, has a business presence in China. It is not conceivable that the Respondent, who is located in China, would not have noticed or would not know of the trademarks when it registered the disputed domain name in April 2003 in respect of the same products as the Complainant’s. Secondly, the Complainant has claimed that:

(1) the Respondent’s website falsely made references to its business name as “Tai Ping Carpet Limited” and stated that “[Tai Ping Carpet] is … a fully owned subsidiary of the publicly listed Tai Ping Carpet International”;

(2) the Respondent has duplicated the Complainant’s TAI PING trademarks in the header of its website by using the following logos which are identical with or similar to the Complainant’s;

(3) the Respondent’s premises were previously raided by the Chinese Administration for Industry and Commerce (“AIC”) as it had used labels, signs and other materials bearing the Complainant’s TAI PING trademarks on or in connection with the sale of counterfeit carpets and rugs and was ordered to terminate all use of the said trademarks as well as to shut down all websites containing the infringing content.

The Respondent has not filed a formal Response to any of these serious claims. This, coupled with the fact that there is no indication that prior to the registration of the disputed domain name, the Respondent is commonly known by the term “tai ping” as an individual, business or organization or has been using the term in connection with a bona fide offering of goods or services, leads the Panel to conclude that the disputed domain name was registered in bad faith with intent to create an erroneous impression of an association with the Complainant and/or its products.

The Panel therefore finds for the Complainant on the third element.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <taipingcarpet.com> be transferred to the Complainant.


Tan Tee Jim, S.C.
Sole Panelist

Dated: October 16, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1219.html

 

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