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WIPO Arbitration and Mediation Center


ADMINISTRATIVE PANEL DECISION

FUJITSU Limited v. tete and Lianqiu Li

Case No. D2006-0885

 

1. The Parties

The Complainant is FUJITSU Limited, of Japan, represented by Shapiro Cohen, Canada.

The Respondent is tete and Lianqiu Li, of Guangdong, China.

 

2. The Domain Name and Registrar

The disputed domain name <ʿͨ.com> is registered with Name.com LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on July 11, 2006. On July 12, 2006, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the domain name at issue. On July 13, 2006, Name.com LLC 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 August 3, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2006. The Response due date was extended to September 15, 2006. The Response was filed with the Center on September 15, 2006.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 28, 2006. 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

The facts of the present case are summarized as follows:

The Complainant was founded in 1935 as Fuji Tsushinki Manufacturing Corporation. In 1962, Fujitsu Limited was officially adopted as its English corporate name and since then, the Complainant together with all its subsidiaries and affiliated companies have continuously and exclusively used the following marks: ʿͨ , FUJITSU and FUJITSU & Design (the MARKS) in over 50 countries, including in China, the country where the Respondent appears to be located. The Complainant owns more than 900 longstanding registrations and several dozen pending applications for the MARKS in at least 150 countries around the world on every continent, including China. The Complainants registrations for the MARKS date back to 1962 in Japan, 1993 in Republic of Korea, 1994 in China, 1998 in Taiwan, Province of China, and 1999 in Hong Kong, SAR of China. The Complainant has at least 21 registrations and two pending applications for the trademark ʿͨ, and at least 29 registrations and 2 pending applications for the marks FUJITSU and FUJITSU & Design in China alone, the country in which the Respondent appears to be located. The MARKS are used in connection with a very broad range of goods and services including computing products, software, telecommunications, microelectronics and electronic devices, consulting services, system integration services, IT infrastructure management and a variety of comprehensive industry solutions in the areas of XML/Web services, IT infrastructure, retail and finance. The trademarkʿͨ has been registered in China by the Complainant since 2004. The Complainant has promoted its MARKS extensively and internationally, including China, in association with its wares and services for several decades and continues to do so.

The Japanese Patent Office has recognized the MARKS as well-known, and has granted to the Complainant numerous defensive registrations which cover the majority of classes of goods and services in respect of its Japanese trademark registrations for the MARKS.

In addition, the Complainant has registered an extensive international domain name portfolio across most gTLDs and ccTLDs including well over three hundred domain names comprising or consisting of the MARKS in Roman and various multilingual characters, such as ʿͨ. At least 34 of these domains are in the various .cn subdomains, in particular .gd.cn (Guangdong), the location of the Respondent. The Complainant uses many of its domain names to maintain a substantial Internet presence in the form of a large, interconnected network of Fujitsu Group company websites, all of which offer comprehensive information to consumers in many languages, including in Chinese, about the Complainant and its vast array of products and services.

From the time when the Complainant first became aware of the registration of the disputed domain name <ʿͨ.com>, and up until about July 5, 2006, the disputed domain name <ʿͨ.com> was registered to Qingrui Chen (also of Guangdong province), the predecessor in title of the Respondent. However this domain name was not associated with Qingrui Chens website. Instead, queries for <ʿͨ.com> were redirected to a page with the heading Money & Sex C Domain Names (Web Addresses) For Sale at the URL http://www.fofa.com/cishan/3/fushitong.htm.

Subsequently, the disputed domain name was no longer redirected to the above-noted URL for a period of time but resolved instead to a page which said Failure to connect to Web Server. As of the date of this Complaint, the former website can still be reached by accessing it directly at the URL above, but the subject domain name is now being redirected to a website at: URL http://www.darenwu.com/yima/domain/domain.htm

The heading on this site, which has content in both English and Chinese, reads For Sale C Domain Names (Web Addresses) For Sale C Make Money Quickly? Choose a great domain name. Immediately above this text on page 14 are links to www.e-pai.com and Products -> www.e-pai.com. This is followed by further references / links to <www.e-pai.com> as well as what appears to be an excerpt from the website at <www.e-pai.com> showing the various personal and household products and appliances that are being offered for sale on that site. This in turn is followed by the text (on page 19 of the printout in Annex K): Buy Web Addresses (Domain Names) C visit yima.net.

According to the English language information on the E-pai website, the full name of this company is E-pai Electrical Appliance Industrial Co. Ltd. and it is located in Guangzhou, Guangdong province. E-pai claims to be a combined company which designs, produces and exports a variety of small household and personal use products, including electrical appliances. On the Contact page at URL http://www.epai.com/2/zw/en/contact.htm, E-pais address and telephone number are provided, together with its bank account particulars for money wire transfers. Qingrui Chen, the prior registrant of <ʿͨ.com> and from whom the Respondent acquired this domain name, is listed as the beneficiary of E-pais bank accounts. The website at URL http://www.fofa.com/cishan/3/fushitong.htm, to which <ʿͨ.com > had initially been redirected, also contains numerous links to E-pais website. The disputed domain name <ʿͨ.com> was transferred from Qingrui Chen to the Respondent on or about July 5, 2006. This was discovered during a routine status check of the WHOIS data during the finalization of this Complaint. There has been no change in the use of <ʿͨ.com> as a result of this transfer, as it is still being redirected to the same website at URL http://www.darenwu.com/yima/domain/domain.htm.

 

5. Parties Contentions

A. Complainant

The Complainants contentions are summarized as follows:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits that its MARKS and trade-name ʿͨ / FUJITSU are not only distinctive of its wares and services around the world, but both character versions of the MARKS and trade-name have acquired, over the course of several decades of extensive use and promotion, considerable international fame together with the associated goodwill such that the MARKS and trade-name are instantly recognizable by consumers globally, including in China, as being synonymous with the Complainant.

In this case, the disputed domain name corresponds exactly to the Complainants Chinese character mark ʿͨ in its entirety. The Complainant cites the UDRP case of Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation) d/b/a Hitachi Limited v. Yosi Hasidim, WIPO Case No. D2000-1542 in which the domain name <.tv> is the Kanji characters of HITACHI which is identical to the HITACHI mark in its entirety and the panelist has concluded that given the international fame of the mark HITACHI, the use of that mark in its entirety together with any other descriptor would be taken as being use of the mark in connection with some business associated with the trademark owner Hitachi. The Complainant submits that the same reasoning is applicable in the present case, since the domain name consists entirely of the Complainants trademark ʿͨ, it thus clearly suggests an association with the Complainant and its products or services, such that consumers would inevitably be lead to expect and/or believe that any website associated with the domain name <ʿͨ.com> is one of the many sites that belongs to the Complainant or its related companies. Consequently, the Complainant submits that the disputed domain name <ʿͨ.com> is identical to its trademark ʿͨ and that there are no elements in the disputed domain name that could possibly distinguish it from, and negate confusion with, the Complainants trademark.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

Based on the following reasons, the Complainant submits that the Respondent cannot satisfy any of these criteria, nor can it demonstrate rights or legitimate interests in the disputed domain name by any other means:

(a) That the Respondent does not have, and has never had any relationship with the Complainant or any of its related companies, nor has the Complainant ever authorized, licensed or otherwise permitted the Respondent to use the trademark ʿͨ, or to register or use any domain name which incorporates the trademark ʿͨ;

(b) That the domain name is not currently being used in association with any bona fide offering of goods or services, nor has it ever been used in association with any bona fide offering of goods or services at any time, either by the Respondent or its predecessor in title Qingrui Chen. The only use that apparently ever has been made of this domain name is to be merely redirected to third-party websites which appear to (a) encourage visitors to buy good domain names to channel Internet traffic (i.e. free visitors) to their sites, apparently using <ʿͨ..com> as an example of how effective this strategy is; and (b) offer, among other things, domain name registration services and consumer products, in association with completely unrelated domain names and business names. None of these entities, including E-pai, Qingrui Chen or the Respondent have anything whatsoever to do with the Complainant or its MARKS. However, the Complainant contends that they are all benefiting, and presumably generating revenue, from the Internet traffic that is being driven - more particularly by the Internet users that are being misdirected - to this series of sites by the well-known nature of <ʿͨ.com>. The fact that this is precisely the result that is intended by these parties, including by the registrant of <ʿͨ.com >, is made abundantly clear by the text described in the redirected site at <www.darenwu.com>, which acknowledges that the reason one has arrived at this site is because of the interest generated by the great name <ʿͨ.com> and not because of the content.

(c) There is no evidence that the Respondent, who is identified (ambiguously) in the WHOIS record as tete and/or Lianqiu Li is, or ever has been, commonly known by the domain name <ʿͨ.com>, (or its Roman character equivalent) or that it has acquired trademark, service mark or other rights in this domain. Indeed, as described in detail above, the only entities to which the Respondent may be related, similarly to the previous registrant, are those responsible for or somehow associated with the websites to which <ʿͨ.com> is being redirected, or which are referenced on the redirected websites (i.e. E-pai).

(d) There is no evidence that the Respondent is currently making legitimate non-commercial or fair use whatsoever of <ʿͨ.com>. From the time the Complainant first discovered the registration of <ʿͨ.com> to the present, the disputed domain name has never linked to an active website involved in any non-commercial or fair use offer of goods or services by either the Respondents predecessor in title Qingrui Chen or the Respondent. The Respondent has also not established any other known presence on the Internet in association with <ʿͨ.com>. On the contrary, the only use that appears to have been made of <ʿͨ.com> (including its current use) is to redirect it to completely unrelated URLs of a clearly commercial nature. It is therefore clear that the Respondent is intentionally deriving direct or indirect commercial benefit from <ʿͨ.com>, either in the form of advertising/domain name sales revenue in conjunction with the <fofa.com> and <darenwu.com> sites, or from the misdirected Internet traffic to the E-pai site(s).

3. The domain name was registered and is being used in bad faith.

Based on the following reasons, the Complainant contends that the disputed domain name was registered and is being used in bad faith:

(a) The Complainant contends that the Respondent appears to have provided false, or at minimum incomplete or inaccurate contact information, which is an accepted indicator of bad faith. The name of the registrant (as well as the administrative, technical and billing contact) listed in the WHOIS record is ambiguous, i.e. tete and/or Lianqiu Li. It is not clear what tete is (personal name?) nor which of these two names is actually intended to identify the registrant. Similarly, the address information for the registrant (administrative, technical and billing contact) is incomplete, since no street address or even post office box, is provided. The apparent ambiguities in the WHOIS contact information are indicative of an attempt on the part of the registrant to make it difficult to be reached, particularly as the WHOIS information is the only means available to the Complainant or any other third party to contact the registrant. This flies in the face of the registrants obligations under its service agreement with the registrar to keep its contact information current and accurate.

(b) The Complainant contends that the Respondent registered <ʿͨ.com> in order to prevent it (and/or its related companies) from reflecting its MARK in this corresponding domain name, particularly in view of (a) the Respondents lack of any relationship whatsoever with the Complainant, including authorization to use the MARK as part of a domain name or otherwise, and (b) the fact that the Respondent cannot demonstrate any rights to or legitimate interests in <ʿͨ.com>. Although paragraph 4(b)(ii) of the Policy specifically refers to the demonstration of a pattern of conduct by the Respondent seeking to prevent trade-mark owners from reflecting their marks in their domain names, the Complainant submits that evidence of such pattern of conduct is not available here since it is not possible to conduct the reverse WHOIS database lookups which would disclose other domain names registered to the Respondent in this TLD. However, the Complainant contends that the previous registrant Qingrui Chen, from whom the Respondent acquired <ʿͨ.com>, is known to have engaged in a pattern of similar conduct, namely the bad faith registration and use of a domain name comprising a third party trade-mark, and the Complainant submits that this pattern is very relevant in this case, irrespective of the relationship, if any, between the Respondent and previous registrant. The Complainant cites the UDRP case of Wal-mart Stores, Inc. v. Qingrui Chen, (WIPO Case ID: HK-0400040, Decision ID: DE-0400022) in which the panelist ordered the transfer of the domain name <ֶ .com> (<wal-mart.com> in Chinese characters) to the Complainant Wal-Mart Stores, Inc. The registration by Qingrui Chen of <ֶ .com> as well the domain name disputed herein, both of which consist entirely of the famous marks of entities completely unrelated to him, discloses a pattern of conduct which is clearly intended to prevent the unrelated trade-mark owners from reflecting their marks in a corresponding domain name, and amounts to an intentional interference with the owners rights to use their marks in commerce. Such conduct is expressly identified in the Policy as probative of bad faith use and registration, and has been discussed extensively in prior Administrative Panel decisions. In particular, it has been repeatedly held that the registration of numerous domain names that correspond to registered trade-marks of other, unrelated and diverse companies, is evidence of the requisite pattern of conduct for the purposes of establishing bad faith under paragraph 4(b)(ii) of the Policy (see Nabisco Brands Company v. The Patron Group, Inc.,WIPO Case No. D2000-0032, Stella DOro Biscuit Co., Inc. v. The Patron Group, Inc., WIPO Case No. D2000-0012, and Kabushiki Kaisha Hitachi Seisakusho (Japan Corporation), d/b/a Hitachi, Ltd. v. Fortune International Development Ent. Co. Limited., WIPO Case No. D2000-0412). The Complainant submits that where, as here, a registrant has clearly appropriated and registered as domain names the well-known trade-marks of two completely unrelated parties who share nothing other than extensive international reputation and fame associated with their trade-marks and trade-names, a finding of a pattern of bad-faith conduct is inescapable. The Complainant further submits that the bad faith conduct of Qingrui Chen is relevant to this case because (i) <ʿͨ.com> has only very recently been transferred to the Respondent; (ii) the Respondent is making the exact same use of <ʿͨ.com> as the previous registrant Qingrui Chen, therefore it is reasonable to conclude that they are connected in some way, and (iii) it has been established by UDRP precedent that the transferee of a domain name accepts the responsibility for the infringement of third party rights that may arise from the transfer, particularly where the transferor is a known infringer. In this regard, the Complainant also cites the UDRP case of Kabushiki Kaisha Sangyokeizai Shimbunsha v. Jg Kim, WIPO Case No. D2001-0620 which in the opinion of the Complainant shares numerous analogous facts with the present case. The Complainant submits that the facts of the Shimbunsa case are analogous to the present case, and Panelist Li Yongs reasoning is similarly applicable. Not only can the Respondent not claim any plausible rights or legitimate interests in <ʿͨ.com> on his own account, as described herein, but his/her lack of rights or legitimate interests in <ʿͨ.com> can also be inferred from the fact that this domain was acquired from Qingrui Chen who is known to have previously engaged in the bad faith registration and use of a domain name corresponding to famous third party trade-mark which he lost pursuant to a UDRP proceeding, and the Respondent is continuing to use <ʿͨ.com> in the same way as Qingrui Chen. Accordingly, at the time of acquiring <ʿͨ.com> from Qingrui Chen, the Respondent was, or should have been aware that <ʿͨ.com> may infringe upon the legitimate rights of the Complainant, but by accepting the transfer of the domain name, s/he also accepted responsibility for the consequences arising directly from the transfer, namely that as part of a known pattern of bad-faith registrations, <ʿͨ.com> may be the subject of a UDRP proceeding by the owner of the corresponding well-known trade-mark ʿͨ. The Complainant accordingly submits that in view of the facts set forth in the present case, and in the absence of the Respondent being able to demonstrate its own rights to <ʿͨ.com>, the only conceivable reason for acquiring and maintaining this registration is the bad-faith intention to prevent the Complainant from registering its own MARK as a domain name.

(c) The Complainant submits that the Respondents conduct prior to the filing of this Complaint has demonstrated its intention to use <ʿͨ.com> primarily for the purpose of disrupting the business of the Complainant. Since the time the Complainant has become aware of this domain name, it has either not resolved to an active, accessible website, or it has been redirected to websites where domain names, including <ʿͨ.com>, are being offered for sale, and which also contain numerous links to and excerpts from the E-pai website, a business to which the Respondents predecessor in title is obviously connected. As a result, Internet traffic that is reasonably intended for the Complainant is being directly diverted to both the third party websites and the E-pai sites. The Respondent is therefore using <ʿͨ.com> to intentionally attract, for commercial gain, Internet users to all of the various websites described herein by creating a likelihood of confusion with the Complainants MARK as to the source, sponsorship, affiliation or endorsement of the Respondents website, or of any products/services offered on such website. Due to the broad brand recognition, consumer drawing power and goodwill associated with the FUJITSU and ʿͨ MARKS and trade-name, it is reasonable to assume consumers would inevitably expect that a domain name consisting solely of the ʿͨ MARK in its entirety, and any website associated therewith, would be connected with the Complainant, particularly in view of the large number of such corresponding domain names already owned by the Complainant. Any Internet traffic at <ʿͨ.com> would thus be intended for the Complainant, yet would be diverted to the Respondent. Disruption to the business of the Complainant similarly results if the domain name is either inactive or is associated with a webpage indicating some kind of server or network problem, as was temporarily the case here. In this regard, UDRP cases have clearly established that in given factual situations, the concept of bad faith use of a domain name includes non-use or inaction on the part of the Respondent. This principle, originally enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 has been adopted by numerous Panels to date, including in Hitachi, Ltd. v. Jorge Borborema, WIPO Case No. DTV2001-0030.

B. Respondent

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Respondent contends that the disputed domain name <xn--zqsv0e014e.com> is registered on May 18, 2004 C a date which is earlier than the trademark registrations of the Complainants trademark ʿͨ in China. Consequently, the Respondent argues that it is impossible for the Respondent to know that <ʿͨ> is the Complainants trademark in China. The Respondent argues that there are 45 trademark classes and the Complainants trademark registrations only cover several classes. Furthermore, the trademark <ʿͨ> in the Chinese language was registered in the second half of the year 2004. Therefore, the trademark ʿͨ in the Chinese language was not a famous trademark in China in 2004. Even now, the Respondent contends that anyone in China may register the trademark ʿͨ in the other classes if he likes because ʿͨ is not a well-known trademark in China. This is unlike the trademark FUJITSU which the Respondent accepts may be a famous mark of the Complainant. The Respondent further submits that the trademark ʿͨ consist of generically common Chinese characters that are not distinctive and therefore could not be registered as a trademark without a drawing.

2. The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent contends that he has rights and legitimate interests in respect of the domain name according to the Policy. The disputed domain name <ʿͨ.com> has been owned by the Respondent since May 18, 2004, much earlier than the registration of the Complainants trademark ʿͨ in Chinese characters in China. The Respondent explained that when a domain name is registered, the domain name will be redirected to the website of Registrar Agent by the Registrar Agent first especially when the domain name has not yet be used by the Registrant. The Respondent contends that the following websites listed by the Complainant, <fofa.com>, <darenwu.com>, <epai.com>, and <e-pai.com)> all belong to the Registrar Agent yima.net. The Respondent has contacted the Registrar Agent yima.net, and the Registrar has acknowledged that the above several domains belonged to them. The Respondent further contends that Chen Qingrui or Qingrui Chen is the employee of the Registrar Agent yima.net. She often used her name to snap-register domain names and then transfers the domain names to the customers name later. The Respondent contends that this is a common practice amongst many other Registrar Companies. The Respondent submits that the websites at URL http://www.fofa.com/cishan/3/fushitong.htm; http://www.darenwu.com/yima/domain/domain.htm; www.e-pai.com; and http://www.epai.com/2/zw/en/contact.htm all belong to the Registrar Agent yima.net and they have nothing to do with the Respondent.

3. The domain name was registered and is being used in bad faith.

Based on the following reasons, the Respondent contends that he has not registered and used the disputed domain name in bad faith:

(a) In respond to the Complainants contention that the Respondent has provided false, incomplete or inaccurate contact information, the Respondent argued that the name of the registrant (as well as the administrative, technical and billing contact) listed in the WHOIS record is very specific and clear - tete is the shop name of the Respondent and Lianqiu Li is the name of the Respondent. Similarly, the address information for the registrant (administrative, technical and billing contact) is complete - the Respondent lives in the village. The entire address is like that found in the Whois data, which the Respondent has received a hard copy from WIPO. This is evidence that the address information for the registrant is complete, specific and clear. If the Whois data is not complete, the Respondent will not be party to this Administrative Proceeding and he would not be able to file this Response.

(b) The Respondent contends that he had acquired the domain names lawfully, in good faith, and in the legitimate interests of its company. The Respondent contends that he has great vested interest in the domain name and the Respondent opts to provide the Panel with physical samples of the listed proprietary products that were researched, designed and manufactured by and at the Respondents facilities.

(c) The Respondent cites the UDRP case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 in which the panelist has ruled that to succeed the Complainant must prove evidence of bad faith in registration and in use of the disputed domain name. Both conditions must be satisfied conjunctively. The Respondent contends that the Complainant is unable to present any evidence to prove that the domain name was registered and is being used in bad faith. The Complainant has merely listed a number of websites which have nothing to do with the Respondent.

(d) The Respondent further contends that the disputed domain name <ʿͨ.com> has been used and is being used to construct a non-profit charity site before any notice to the Respondent of the present dispute. The website can be visited and will be used as a charity site forever. The Respondent contends that he is a benevolent man who aspires to do charity to help the poor. Consequently, the Respondent has registered a series of domain names concerning charity, kindness and benevolence, such as <chinacharity.com.cn>, <cishan.com> (Charity.com of Chinese spell), .com (Charity.com of Chinese IDN, Multilingual Domain xn--30Rr7Y.com), .com (Benevolence.com of Chinese IDN, Multilingual Domain xn--15T232B.com), <cibei.com> (Mercy.com of Chinese spell ȱ), ȝ.com (Kind-Help.com of Chinese IDN, Multilingual Domain xn--5hUs83A.com), <daode.com >(moral.com of Chinese spell ).


6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Parties and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights in the trademark FUJITSU and its Chinese equivalent ʿͨ in many countries throughout the world including China.

The Panel rejects the Respondents contention that the trademark ʿͨ is a mark that consists of generically common Chinese characters and is consequently not distinctive. The trademark ʿͨ is the Kanji characters of FUJITSU. In the Chinese language, the trademark ʿͨ as a whole has no inherent meaning and is not a descriptive term. In general, to those who are well versed in the Chinese language, the first two characters ʿ makes reference to the icon of Japan, Mt. Fuji C the generally accepted translation of Mt. Fuji is ʿɽ. Thus, the Chinese translation of FUJI is ʿ and most Chinese Internet users would recognise this usage. Taken as a whole, the Panel finds that Complainants trademark ʿͨ to be distinctive and it is a trademark in which the Complainant has rights.

The Panel further rejects the Respondents contention that the Complainant has no rights at the time of the registration of the disputed domain names as the trademark ʿͨ has not been registered yet in China. Even if the Complainant has not obtained registered rights in the trademark ʿͨ at the time of the registration of the disputed domain name, the Complainant continues to have rights in the unregistered trademark through extensive usage of the mark and by the publicity and advertising campaigns conducted by the Complainant throughout China. In fact, such unregistered marks are also protected under unfair competition laws in China. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co Ltd. v. Steven S Lalwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. v. Gregg Ricks NAF Case No. 93633; and Passion Group Inc. v Usearch Inc. AF-0250. As such, the Panel finds that the Complainant has rights in the trademark ʿͨ in China. The Complainant has also adduced evidence to show that through extensive marketing and sales promotion, the average consumer in China has come to recognise ʿͨ as the Chinese equivalent of the Complainants trademark FUJITSU. The Panel accepts and finds that the Complainants trademark FUJITSU and its Chinese equivalent ʿͨ are well known marks in which the Complainant has rights.

The disputed domain name <ʿͨ.com> comprises an exact reproduction of the Complainants trademark ʿͨ and the suffix .com. In assessing the degree of similarity between the Complainants mark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainants mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainants electronic products and services. In the case of a multilingual domain name like the disputed domain name in the present case, the question of confusion must be addressed taking into account the average Internet user who is well versed and familiar with the Chinese language.

The Chinese characters ʿͨ is the dominant and the distinctive element of the Complainants mark and it has been reproduced in its entirety in the disputed domain name. The Panel finds that the three Chinese characters ʿͨ portion is the most prominent part of the disputed domain names which will attract consumers attention. The Panel finds that the suffix .com denotes that this domain name is in the generic top level domain and the addition of such a suffix to the trademark ʿͨ is non-distinctive.

Bearing in mind the following factors, in particular (a) the fame of the Complainants trademark; (b) the distinctive character of the Complainants mark ʿͨ; (c) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <ʿͨ.com> identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

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

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

1. The Respondent has not adduced concrete evidence in his Response to show that he has rights or legitimate interests in the disputed domain name other than mere assertions that he ought to have rights to the domain name since it was registered before the Complainant has obtained registration rights in the trademark ʿͨ in China. This argument is untenable as explained in the foregoing paragraphs, given the fame of the Complainants trademark and the fact that the Complainant has rights in unregistered marks through extensive usage. The Response from the Respondent concerning his relationship with Chen Qingrui or Qingrui Chen and the Registrar Agent yima.net also adds little weight to the argument that he has rights or legitimate interests in the disputed domain name. The fact that the Respondent has no relationship with Chen Qingrui or Qingrui Chen and the Registrar Agent yima.net does not confer on him independently rights or legitimate interests in the disputed domain name that are not previously present. It is an accepted general principle of law that purchasers or transfers of registrations must conduct due diligence in the acquisition process and the Latin maxim caveat emptor is equally applicable in this case. The Respondent as successor in title of the domain name registration acquires the domain name subject to the limitations of all existing prevailing rights and legitimate interests (in fact, these rights and legitimate interests of the Complainant as trademark owner are already in existence prior to the transfer or acquisition of the disputed domain name by the Respondent) and he cannot possibly acquire better rights in the disputed domain name (unless concrete contrary evidence can be adduced) than his predecessor in title. Given the fame of the Complainants mark ʿͨ internationally and the extensive use of this mark in China, it is not conceivable that the Respondent did not know of the Complainants rights in the trademark before or at the time of the acquisition of the disputed domain name;

2. The Complainants trademark ʿͨ is a word with no meaning or connection with the goods or services sold under it. Thus the Respondent could not be using the word ʿͨ in a descriptive sense. However, the Respondent did provide plausible explanations in its choice of the disputed domain name which is confusingly similar to ʿͨ;

3 The Respondent has not provided evidence of a legitimate use of the domain names or reasons to justify the choice of the word ʿͨ in its business operations. In fact, there is no evidence that the Respondent is engaged in any business operations at all;

4. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain names incorporating the trademark ʿͨ;

5. There is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services; and

6. The Complainant and its mark ʿͨ enjoy a considerable reputation with regard to electronic and computer goods and services in Japan and in many countries in the world including China. Consequently, in the absence of plausible contrary evidence from the Respondent, the mark ʿͨ is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. 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 domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or 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 the complainant, for valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name; or

(ii) 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

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents website or other on-line location, by creating a likelihood of confusion with the Complainants mark as to the source, sponsorship, affiliation, or endorsement of the Respondents website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

The reasons for the Panels conclusion are as follows:

(a) Firstly, the Panel finds that the Complainant and its mark ʿͨ enjoys a considerable reputation with regard to electronic and computer goods and services in Japan and in many countries in the world including China. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainants trademark rights before or at the time of the registration of the domain name. Consequently, it is pertinent for the Respondent to provide a plausible explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its electronic and computer goods and services. The Respondent argued that he had acquired the domain names lawfully, in good faith, and in the legitimate interests of its company. The Respondent contends that he has great vested interest in the domain name and the Respondent opts to provide the Panel with physical samples of the listed proprietary products that were researched, designed and manufactured by and at the Respondents facilities. However, contrary to what the Respondent has claimed, there is not a single shred of evidence adduced by him in the form of attachments or annexes to the Response that convincingly demonstrates the conduct of legitimate business operations by the Respondent. Such crucial evidence should have been adduced before the Panel to substantiate the Respondents contentions. It is most unfortunate that this has not been done by the Respondent. The Panel is thus left to draw her inferences in the absence of substantial supporting evidence from the Respondent.

(b) The Panel agrees with the Respondent that in order for the Complainant to succeed under the Policy, the Complainant must prove that the disputed domain name has been registered AND used in bad faith by the Respondent. This is an established principle well documented in the UDRP decisions. It is also an accepted rule that non-use or inactive websites of the disputed domain name could constitute bad faith on the part of the Respondent. It is important to note that the since the acquisition or transfer of the disputed domain name to the Respondent, the domain name has remained inactive and has not been used by the Respondent in connection with a bona fide or legitimate offerings of goods or services.

(c) The Respondent has contended that the disputed domain name <ʿͨ.com> has been used and is being used to construct a non-profit charity site before any notice to the Respondent of the present dispute. The website can be visited and will be used as a charity site forever. The Respondent contends that he is a benevolent man who aspires to do charity to help the poor and he has registered a series of domain names concerning charity, kindness and benevolence, such as <chinacharity.com.cn>, <cishan.com> (Charity.com of Chinese spell ), <.com> (Charity.com of Chinese IDN, Multilingual Domain xn--30Rr7Y.com ), <.com> (Benevolence.com of Chinese IDN, Multilingual Domain xn--15T232B.com), <cibei.com> (Mercy.com of Chinese spell ȱ), ȝ.com (Kind-Help.com of Chinese IDN, Multilingual Domain xn--5hUs83A.com), <daode.com> (moral.com of Chinese spell ). Even if we assume that the Respondents claims are credible and true, nevertheless the Respondent has not explained satisfactorily the reasons behind his choice of the domain name <ʿͨ.com> for this charitable website which is identical or confusingly similar to the Complainants trademark ʿͨ that is of considerable international fame. Given the fame of the Complainants trademark ʿͨ, the logical conclusion one would draw on the Respondents choice of domain name, in the absence of plausible contrary evidence, would be that the Respondent is riding on the fame and popularity of the Complainants trademark in the promotion of his alleged charitable website. If the Respondent is allowed to use a domain name that is identical or confusing similar to the Complainants famous or well known trademark, the public may be misled with regard to the issue of sponsorship of the website believing that the Respondents alleged charitable website is in some way associated or sponsored by the Complainant when this is not true.

Furthermore, it has been more than two years since the transfer of the disputed domain name to the Respondent but the alleged charitable website which the disputed domain name is supposedly to resolve unto has yet to materialize. Finally, the fact that the Respondent has registered all these generic domain names with references to charity, benevolence and kindness does not prove concretely that the Respondent is in fact engaged, in anyway, in such charitable organizations or related activities. The Respondent has not demonstrated that he is using the disputed domain name for legitimate non-commercial or fair use purposes.

(d) Based on the evidence adduced before the Panel, the Panel finds that the Complainant has established a case of registration and use of the disputed domain name in bad faith. This case has not been successfully rebutted by the Respondent. This is the conclusion that the Panel has come to taking into consideration the fame of the Complainants trademark; the conduct of the Respondent pertaining to the use of the disputed domain name; the lack of concrete evidence by the Respondent to substantiate his assertions and claims; and the inability of the Respondent to explain satisfactorily the choice of the disputed domain name. In this regard, it is important to note that the situations stated in paragraph 4(b) of the Policy constituting bad faith are not exhaustive and the Panel accepts the Complainants submission that based on the facts and all the other evidence adduced, it has successfully proved that the Respondent has registered and used the disputed domain names in bad faith.

 

7. 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 <ʿͨ.com> be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: October 12, 2006

 

: https://www.internet-law.ru/intlaw/udrp/2006/d2006-0885.html

 

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