LeitsätzlichesDas Schiedsgericht sieht in der Zufügung des Namens eines Landes (hier: china) keine unterscheidungskräftigen Zusatz zu der Marke eines Anderen. Auch in laufenden Geschäftsbeziehungen ist die Registrierung einer fremden Marke als Domain, verbunden mit der Aussage, man habe in der Geschäftsbeziehung genug bezahlt und werde die Domain nicht auf den Markeninhaber übertragen, als "bad faith" zu werten.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fall Nummer: D2002-1137
Entscheidung vom 28. Januar 2003
1. The Parties
The Complainant is ... (DMC), C/o ... France.
The Respondent is Jesse, of Shanghai 200001, China.
2. The Domain Name and Registrar
The disputed domain name <dmcchina.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 December 13, 2002. On December 13, 2002, 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 December 17, 2002, 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 December 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentâ€™s default on December 11, 2002.
The Center appointed Masato Dogauchi as the sole panelist in this matter on January 16, 2003. 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.
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerâ€™s assessment concerning the Complaintsâ€™ compliance with the formal requirements of the Rules; the Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the Rules; no Response was filed within the time specified by the Rules and the single-member Administrative Panel was properly constituted.
4. Factual Background
Since the Respondent failed to furnish its response, the Panel finds the following facts based upon the claim and the evidence submitted by the Complainant.
The Complainant is a company incorporated under French law. It is well known that it is manufacturing and marketing consumer threads, industrial thread and textile related products all over the world. The Complainant is the holder of national and international trademarks representing the word of "DMC" as it is or as a part of the trademark. For instance, in France the word trademark "DMC" was registered under No.1346322, covering class 14, 16, 23, 24, 25, 26, 40 and 42.
The Respondent is a Chinese merchant doing business, among others, in Shanghai, China.
On March 30, 2001, the Singaporean subsidiary of the Complainant allowed Shanghai Xing Song Industry Co. Ltd., whose representative was the Respondent, to sell the Complainantâ€™s goods in Shanghai. On June 21, 2001, the Respondent registered the disputed domain name, <dmcchina.com> with the Registrar.
5. Partiesâ€™ Contentions
The Complainant asserts in essence as follows:
(1) The disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights;
(2) The Respondent should be considered as having no rights or legitimate interests in respect of the dispute domain name;
(3) The disputed domain name was registered in bad faith.
With regard to item (1) above, the Complainant introduced copies of the trademarks in which the Complainant has the right under French law. It also asserts that it has the right in the trademarks representing the word "DMC" in other countries including China. According to the Complainant, the word "china" as a suffix to the word "dmc" does not change the conclusion that "dmcchina" is confusingly similar to the Complainantâ€™s trademark "DMC" in this case, since it has been held in some WIPO cases that the linking of a trademark and a country name as a suffix does not distinguish the domain name from the trademark.
With regard to item (2) above, the Complainant asserts that the Respondentâ€™s company was allowed to sell the Complainantâ€™s goods in Shanghai only; that the Complainant granted the Respondent the limited permission to use the Complainantâ€™s logo within Shanghai shop and shop front only; that the Respondent registered the disputed domain name without asking for permission nor informing the Complainant; that a distributor does not have the unfettered right to register a domain name incorporating the trademark of the manufacturer; that the subsidiary of the Complainant sent a registered mail to the Respondent confirming that the Respondent was not an authorized dealer of the Complainantâ€™s goods in China and was not permitted to trade in the Complainantâ€™s products as of July 26, 2002.
With regard to item (3) above, the Complainant asserts that neither the Respondent nor the Respondentâ€™s company, Shanghai Xing Song Industry Co. Ltd., has such trademarks as DMC or DMCCHINA registered in China or elsewhere; that the trademarks of the Complainant are famous all over the world including in China; that as the Respondent was distributing the Complainantâ€™s goods in China it could not ignore the existence of such trademarks; that the Respondent reproduced the Complainantâ€™s trademark on its website at least on September 11, 2001; that the Respondent tried to register two companies whose name included the term DMC; that the website of the Respondent which showed a photograph of the Complainantâ€™s shop sign and presented goods contained the only contact e-mail of the Respondent; that the Respondent suspended to use the disputed domain name which it still refused to transfer; that in reply to the Complainantâ€™s request the Respondent asked who would cover up the losses related to the website.
The Complainant accordingly requests a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainantâ€™s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules, a Panel shall decide a 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. Since the Respondent has not made any submission in this case, the following decision is rendered on a basis of the submission from the Complainant.
In accordance with Paragraph 4(a) of the Policy, in order to qualify for a remedy, the Complainant must prove each of the following:
(1) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the dispute domain name;
(3) The disputed domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The panel has found that the Complainant is the holder of national and international trademarks representing the word DMC as it is or as a part of the trademark. Although the disputed domain name in this case <dmcchina.com> is not identical to the Complainantâ€™s trademark, DMCCHINA is confusingly similar to DMC since DMCCHINA can easily be divided into two parts, "dmc" and "china". And, the addition of the name of a country as a suffix normally indicates that it is the domain name of the trademark owner for the business activities in that country. Ordinary people would believe that the website using such a name is run by the owner of the trademark. See, Koninklijke Philips Electronics NV v. Gopan P.K. (WIPO Case No. D2001-0171), in which, in respect of the domain name <philipsindia.net>, the panel found that "the addition of the geographical indicator ... adds nothing other than to signify a geographical location or limitation and would be regarded by virtually every person who saw the disputed domain name as an indication that it was the domain name of Philips as utilised in India." See also BP p.l.c. v. Kang-Sungkun Portraits Production (WIPO Case No. D2001-1097) in respect of <bpjapan.com>; Dr.Ing. h.c. F. Porsche AG v. Simon Postles (WIPO Case No. D2001-1360) in respect of <porschecanada.com>.
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark in which the Complainant has rights. Requirement (1) above is accordingly satisfied.
B. Rights or Legitimate Interests
Indeed from March 30, 2001, through July 26, 2002, the Respondent was an authorized dealer of the goods of the Complainant; there is however, no evidence to show that the Respondent had during such period of time the right to register the disputed domain name in accordance with the agreement between them. Accordingly, without verifying the validity to cancel the dealership agreement by sending a letter from the subsidiary of the Complainant to the Respondent, there is no reason why the Respondent has had the rights since July 26, 2002. With regard to the existence of legitimate interests of the Respondent in respect of the disputed domain name, being just a dealer of the goods of the Complainant cannot justify such interests because the business of such a dealer through the Internet can be done by using its own domain name different from the manufacturer of the goods and, if necessary, such a dealer can refer to the website of the manufacturer with its permission.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the dispute domain name. Requirement (2) above is accordingly satisfied.
C. Registered and Used in Bad Faith
As the Respondent was permitted to distribute the Complainantâ€™s goods in China on March 30, 2001, it is clear that the Respondent knew that the name "DMC" had been used as a brand name of Complainant on June 21, 2001, when the Respondent registered the disputed domain name with the Registrar. Moreover, it is established by the printout of the webpage of "http://www.dmcchina.com/" submitted by the Complainant (Annex H) that the disputed domain name was used at least on September 11, 2001, for the purpose of showing some textile goods and notifying the contact e-mail address to the viewers, which is allegedly a private e-mail address of the Respondent.
In addition, it is established by the printout of the e-mail of March 25, 2002, submitted by the Complainant that the Respondent wrote "we have not transfer[sic] this website to you now, for we have paid the money and cost for more for this website. who[sic] will cover up this losses[sic]?" This message is enough to show that the Respondent is keeping the disputed domain name for selling it to the Complainant.
The Panel therefore finds that the disputed domain name has been registered in bad faith and is being used in bad faith. Requirement (3) above is accordingly satisfied.
Accordingly, all three cumulative requirements as provided for in Paragraph 4(a) of the Policy are determined to be satisfied.
In accordance with Paragraphs 4(b)(i) of the Policy and 15 of the Rules, the Panel decides that the disputed domain name <dmcchina.com> be transferred to the Complainant.