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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

High Tech Computer Corporation v. LCD Electronic Systems SRL

Case No. DRO2008-0011

 

1. The Parties

1.1 The Complainant is High Tech Computer Corporation, of Taoyuan, Taiwan, Province of China, represented by Mihaela Gavenea, Romania.

1.2 The Respondent is LCD Electronic Systems SRL, of Bucharest, Romania, represented by Nedelcu Cristian Law Firm, Romania.

 

2. The Domain Name and Registrar(s)

2.1 The disputed domain name <htc.ro> (the “Domain Name”) is registered with RNC.ro (the “Registrar”).

 

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 8, 2008 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. It also identified the language of the relevant registration agreement to be Romanian.

3.2 As the Complaint had been submitted in English, on July 14, 2008 the Center forwarded a notice to the Complainant stating that the Complainant should (a) provide evidence of an agreement between the parties that proceedings be English; (b) translate the Complaint into Romanian; or (c) submit a request that English be the language of the proceedings.

3.3 On July 18, 2008 the Complaint submitted a request that the proceedings be in English. It claimed (a) to be a Chinese legal person with no branch or subsidiary in Romania and with no knowledge of the Romanian language; (b) that the Respondent understood English and had previously communicated with the Complainant in English; and (c) that the applicable registration agreement was at least until 2006 simultaneously in English and Romanian. However, at the same time it also submitted a Romanian translation of the Complaint.

3.4 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”).

3.5 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 July 24, 2008. The Complaint as well as the Center’s explanatory email accompanying the notification were in both Romanian and English.

3.6 In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Response was filed in English with the Center on August 7, 2008.

3.7 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 20, 2008. 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

4.1 The Complainant is a Taiwanese entity that was founded in 1997 and which operates in the mobile phone sector. Its products are sold around the world including in Europe. Its distributor in Romania is TCCM s.r.o., (“TCCM”) a company registered in the Czech Republic.

4.2. The Complainant is the owner of a number of registered trade marks in various territories and all of which include the letters “htc” in stylised text. An example of these marks is United Kingdom registered trade mark No. 2424738 dated June 16, 2006, which takes the following form:

4.3 (The“HTC Smart Mobility Mark”). Others include Romanian trade mark No. 77990 dated May 16, 2006 (which takes the form of the UK mark but with the words “smart mobility” omitted and with the device and “htc” elements presented vertically) and Swiss registered trade mark No. 565342 dated August 27, 2007 (which takes the form of the words “hTC Touch” in stylized text.)

4.4 The Complainant owns, and operates the web site to be found at, the domain name <hrc.com>.

4.5 The Respondent would appear to be a private company registered and based in Romania. Since 2006 it has traded in HTC products. These products have been obtained from a number of the Complainant’s distributors in Europe.

4.6 The Domain Name was initially registered on July 9, 2001, but appears not to have been acquired by the Respondent until February 2007. At that time the Respondent created a website to promote the sale by it of HTC products.

4.7 It would appear that in November 2007 there were some discussions between the Respondent and a TCCM representative as to the possibility of the Respondent being appointed as an official distributor of the Complainant’s products. However, an early sticking point in these discussions was the Respondent’s use of the Domain Name.

4.8 For example, one Kamil Vacek sent the Respondent an email on November 13, 2007. In that email Mr Vacek stated that if the Respondent did not agree to an arrangement that would enable Internet traffic to the Domain Name to be redirected to the Complainant’s <htc.com> website (such as the sale of the Domain Name to the Complainant), then the Complainant would engage local lawyers so as to prevent the Respondent from using the Domain Name. Further in an email in March 2008, the Complainant’s representative informed the Respondent:

“Because of <htc.ro> you will be also on HTC global black-list so nobody from HTC official distributors cannot supply products to your company”.

4.9 On January 28, 2008 the Complainant’s General Counsel sent a cease and desist letter to the Respondent. That letter primarily complained about the contents of the Respondent’s website (which were alleged to infringe copyright and trade mark rights) rather than making any demands in relation to the Domain Name per se. The Respondent responded to that letter on February 12, 2008. In that letter the Respondent denied that it had infringed the Complainant’s trade marks but did not address the Complainant’s allegations of copyright infringement.

4.10 It would appear that all times (including as at the date of this decision) the web site operating from the Domain Name has operated to promote sales of genuine HTC products. After a lengthy loading phase, the Internet user is presented with a Flash-generated web page. In the top right hand corner of the page is prominently displayed the HTC Smart Mobility Mark and below that the page is dominated by a striking picture of nine of HTC’s “Touch Diamond” products arranged in a row . The page also contains the links “Products”, “About Us”, “News”, and “Contact”. If the “Contact” link is clicked upon, some Romanian text is displayed. Whilst the Panel is unclear what that text says, there appear to be references to both the Respondent and the Complainant.

 

5. Parties’ Contentions

A. Complainant

5.1 The Complainant claims that the Domain Name is identical to the textual element of its registered trade mark.

5.2 It also asserts that the Respondent has no rights or legitimate interests in the Domain Name. It claims that the Respondent stated on its website that “starting with September 2006, LCD Electronic Systems became the HTC authorized importer and distributor for Romania”, but this is said to be false as the Complainant has never concluded any distribution, license or any other agreement with the Respondent.

5.3 The Complainant contends that even if the Respondent is re-selling genuine HTC products in Romania, it still has no rights to use the Domain Name. It claims that the Respondent is using the Domain Name to falsely suggest “some sort of link or partnership” with the Complainant.

5.4 On the issue of bad faith registration the Complainant repeats it allegations that the Domain Name is being used to falsely suggest that it is an authorised distributor.

5.5 The Complainant also claims that the website operating from the Domain Name infringes its trade mark rights and its copyright “in the format and content of the Complainant’s website”. On the issue of copyright infringement, the Complainant appends copies of pages from its own website that operates from the <htc.com> domain name. The first copy page appended has the letters “hTC” and the HTC device in the top left hand corner and displays the same striking photo of nine of HTC’s “Touch Diamond” products arranged in a row that appears on the front page of the Respondent’s website.

5.6 Lastly, the Complainant claims that in an email dated April 16, 2008 the Respondent offered to sell the Domain Name to the Complainant for 36,000 Euros, and this is said to be further evidence of bad faith.

B. Respondent

5.7 The Respondent asserts that all the products sold by it are genuine HTC products sourced from a number of HTC distributors in Europe. Reference is then made to the Complainant’s Romanian HTC trade mark and the Respondent contends that the classes in which that mark is registered mean that the Respondent’s use of the Domain Name to promote sales of HTC products does not involve any trade mark infringement.

5.8 The Respondent claims that its dealings in HTC products in Romania are legal and the extent of these dealings are such that it has a legitimate interest in the Domain Name. It denies that its use of the Domain Name misleads consumers because it was “only trading original HTC products coming from the Complainant’s main dealers.”

5.9 The Respondent also refers to the discussions between it and TCCM as to the Respondent’s possible appointment as a distributor.

5.10 The Respondent denies that the registration and use of the Domain Name for the purpose of distributing the Complainant’s products involves bad faith registration and bad faith use. It admits that at one stage it offered to sell the Domain Name for €36,000, but says that the Complainant has presented this in the Complaint out of context. This is said to have been an offer made in the course of negotiations between the Respondent and the Complainant during which the Complainant had at one stage offered to purchase the Domain Name for 5,000 Euros.

 

6. Outstanding Procedural Issues

6.1 Before addressing the substance of the Complaint, it is necessary first to address the question of the language applicable to this dispute. Paragraph 11(a) of the Rules provides:

“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, having regard to the circumstances of the administrative proceeding.”

6.2 As was stated by the panel in Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.”

6.3 Paragraph 11(b) of the Rules provides that a panel may require that documents that are not filed in the language of the proceedings be translated into that language. However, this Panel does not believe that is the sole extent of a panel’s powers so far as language is concerned.

6.4 Subject always to the requirement that proceedings are conducted in accordance with the Policy and the Rules, a panel is generally granted wide discretionary powers regarding the conduct of those proceedings under paragraph 10 of the Rules. Insofar as a panel is concerned that the conduct of proceedings in a language other than that of the applicable registration agreement and the native language of the respondent may have had a detrimental impact on the ability of a respondent to express itself, then a panel may use those powers to address that concern. For example, it may issue a procedural order seeking further clarification of the Respondent’s case (see, for example, Mirela Zoita and Florin Popescu v. Westaco S.R.L., WIPO Case No. DRO2007-0008). The Panel can even conceive of circumstances where a panel might consider it appropriate to order the translation by the complainant of a complaint into a language other than the language of the proceedings.

6.5 Therefore, the fact that a panel has these wide powers available to it under paragraph 10, is also something that the panel can take into account when exercising its power to determine the language of proceedings under paragraph 11(a) of the Rules.

6.6 In this case, the Complainant provided the Respondent with a copy of the Complaint in Romanian but has put in a submission requesting that these proceedings take place in English. The Respondent has not objected to the proceedings being conducted in English and has filed its Response in English. It is also clear that the Respondent has a good command of the English language. It has previously corresponded with the Complainant’s European distributor in English and its own website is at least in part in English.

6.7 In the circumstances, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings be English.

 

7. Discussion and Findings

7.1 The Panel has reviewed the parties’ submissions. In the light of this material, the Panel finds as set out below.

7.2 Under the Policy the Complainant must satisfy the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

7.3 The Panel will consider each of these requirements in turn.

A. Identical or Confusingly Similar

7.4 Notwithstanding the submissions of the parties in relation to this issue, the question of confusing similarity is relatively straightforward. It is clear that the Complainant has a number of registered trade marks around the world of which the letters “htc” are the predominant (if not the only) textual element. In the circumstances, the Panel has little difficulty in concluding that the Domain Name is confusingly similar to a number of trade marks in which the Complainant has rights. This Panel is of the view that the non-textual element of the Complainant’s marks is something that needs to be taken into account when assessing the question of confusing similarity.¹ However, in this particular case the Panel does not believe this to mean that this element in any of the marks so detracts from the textual element so as to prevent a finding of confusingly similarity.

7.5 The Respondents contentions as to the nature of the Complainant’s registered mark in Romania and the classes for which it is registered misunderstands how the Policy works. The question of confusing similarity under the Policy does not involve any assessment of whether the domain name in issue involves infringement of a trade mark or whether there would be a “likelihood of confusion” as that term is understood as a matter of trade mark law.

7.6 All that is required is for a comparison to be made between the relevant mark or marks and the domain name in question to establish whether a requisite degree of similarity exists. The content of any website or the manner in which the domain name is used is not relevant to that assessment (see paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”)). Similarly, it does not matter where the trade marks relied upon are registered (see paragraph 1.1 of the WIPO Overview).

7.7 That is not to say that these issues are of no significance under the Policy. In some cases they may be highly relevant to the assessment of bad faith or rights or legitimate interests. However, they are essentially irrelevant so far as paragraph 4(a)(i) of the Policy is concerned.

7.8 In the circumstances, the Panel has little difficulty in concluding that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

7.9 The issue of rights or legitimate interests is at the heart of the dispute between the parties in this case. The Complainant contends that the Respondent has no legitimate interest in a domain name that incorporates its mark without its consent, even if that domain name is being used by the Respondent to sell its own products. In contrast, the Respondent contends that such use in relation to genuine products is legitimate and no formal authorisation is required.

7.10 This is an issue that has in the past been a matter of some debate and on which different panels have held different views. However, as is recorded in paragraph 2.3 of the WIPO Overview, the majority view among panelists on this issue (which incidentally is the view that is most generous to respondents) is that such use will give rise to a right or legitimate interest if the respondent has complied with a number of minimal requirements. These requirements were first drawn together in Oki Data Americas Inc v. ASD Inc., WIPO Case No. D2001-0903 and include, inter alia, the actual offering of goods and services at issue, the use of the site to sell only the trade marked goods and the site accurately disclosing the registrant’s relationship with the trade mark owner.

7.11 In this case the Panel assumes that the Respondent is able to satisfy the first two of these requirements. Therefore, the key question in this case is whether the Respondent accurately discloses its relationship with the Complainant.

7.12 The Complainant contends that the Respondent has falsely represented itself as the Complainant’s authorised importer and distributor for Romania. It is an allegation that is not really denied by the Respondent. The Respondent claims that it has purchased products from the Complainant’s legitimate distributors, but that does not answer the Complainant’s point. A claim by someone that they are an authorised importer and distributor implies something more than that they are lawfully selling genuine products. It suggests some form of ongoing and continuing relationship between the importer and the original manufacturer of the products. There is no evidence of such a relationship in this case. The Respondent has provided evidence that at one point the Respondent and the Complainant (or its European distributor) were in discussions in relation to the Respondent’s possible appointment as an authorised importer and distributor. However, this material if anything supports the Complainant’s case that no such arrangement was ever put in place.

7.13 There is also the overall look and feel of the Respondent’s website. In this Panel’s view the assessment of whether there has been accurate disclosure of the relationship with the trade mark owner has to be considered in the round. It is an overall assessment of the website as it would be understood by the Interent user and it is not sufficient for a respondent to point to small print explaining that relationship if the overall impression given by the site is something different. In this case the first thing that the Internet user is likely to notice is the Complainant’s trade mark. There is also the prominent use of a striking image that appears to have been taken from the Complainant’s own website without consent or permission. The Complainant contends that such use involves copyright infringement. The Panel is not in a position to judge whether this is the case. The Complainant has, for example, put in no evidence that it is the owner of the copyright in that image. However, this is not quite the point. The issue here is not whether the Respondent’s website infringes copyright as a matter of Romanian law. It is the impression that is conveyed by the use of that image and other material on the Respondent’s site. In the Panel’s view the overwhelming impression given by the website is that this is the Complainant’s own Romanian website, when in reality it is not. There is an “about us” page on the website, but even if the information given on that page is accurate (and the Respondent puts forward no evidence on the point), in the Panel’s view this text is insufficient to dispel the impression given by the website as a whole.

7.14 Although ordinarily it is a Complainant that bears the burden of proof so far as the requirements of the Policy are concerned, this Panel held in Owens Corning v. NA WIPO Case No. D2007-1143 that where a Respondent seeks to argue that it is entitled to use a domain name in relation to genuine products, then it is the Respondent that must show that the Oki Data conditions are satisfied. The reasoning in Owens Corning has been adopted in a large number of subsequent cases.² The Respondent has failed to show that the Oki Data conditions are satisfied in this case.

7.15 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

7.16 Given the Panel’s findings in connection with the question of rights or legitimate interests, it follows that the Complainant also succeeds in its claims of bad faith registration and use. The Panel accepts that the Respondent has registered and used the Domain Name to suggest a connection with the Complainant that does not exist. It has done so with a view to attracting Internet users to its own website for its own commercial advantage. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy, which gives as an example of circumstances indicating bad faith registration or use:

“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 web site or location.”

This is so even if the commercial gain intended is through the sale of genuine products of the Complainant.

7.17 In coming to its conclusions, the Panel expresses no view of the Complainant’s claim that the Respondent’s activities involve trade mark or copyright infringement. Such claims are rarely of assistance in proceedings under the Policy. As this Panel explained in 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, whilst abusive registration and trade mark infringement in practice often overlap, they are not the same thing. One does not necessarily follow from the other.

7.18 Further, the Panel is not persuaded by the Complainant’s references to the Respondent’s offer to sell the Domain Name to the Complainant for 36,000 Euros. This offer was perhaps a somewhat opportunistic one by the Respondent, but the Panel does not believe that there is any convincing evidence before it to suggest that the Domain Name was initially registered by the Respondent with the sale of the Domain Name to the Complainant in mind.

7.19 Nevertheless, the Panel finds that the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.

 

8 Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <htc.ro> be transferred to the Complainant.

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Matthew S. Harris
Sole Panelist

Date: September 3, 2008