Citizen Watch (China) Co., Ltd. v. Cheng Zhi Gang

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citizen Watch (China) Co., Ltd. v. Cheng Zhi Gang

Case No. D2001-1305

See Also PDF File: D2001-1305

1. The Parties

The Complainant is Citizen Watch (China) Co., Ltd. of Tian Zhu Lu 7,

Tian Wei Two-Jie, Tian Zhu Kong Gang Gong Ye Qu, Shun Yi Qu, Beijing, 101312,

China.

The Represented by Deacons, Solicitors & Notaries, Alexandra

House, Central, Hong Kong SAR, China.

The Respondent is Cheng Zhi Gang, a Chinese citizen. His address is

He Xi Qu, Xiao Hai Di, Tianjin, 300350, China.

Respondent is not represented.

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is

<Î÷Ìú³Ç.com>.

The Registrar with which the domain name is currently

registered is Melbourne IT Ltd., of Level 2, 120 King Street, Melbourne

Victoria 3000, Australia.

3. Procedural History

On October 26 and 29, 2001, the Complainant submitted its

Complaint through e-mail and hardcopy, respectively, with the required filing

fee for a single-member panel, to

World Intellectual Property Organization Arbitration and Mediation

Center ( "WIPO Center"), in accordance with the Uniform Domain Name

Dispute Resolution Policy (the "Policy") adopted by the Internet

Corporation for Assigned Names and Numbers ("ICANN") on August

26, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy

(the "Rules"), and WIPO Supplemental Rules for Uniform Domain Name

Dispute Resolution Policy ("WIPO Supplemental Rules").

On November 2, 2001, WIPO Center sent via email to the Complainant

an "Acknowledgement of Receipt of Complaint".

On November 5, 2001, WIPO Center sent a "Request for

Registrar Verification" via email to the Registrar requesting,

confirmation that the Registrar had received a copy of the Complaint; that the

disputed domain name is registered with it; that the Respondent is the current

registrant of such the domain name; and full contact details available under

the WHOIS database; that the Policy applies to the Domain Name; and, the

current status of the domain name. On November 8, 2001, the Registrar

made the reply thereto.

On November 12, 2001, WIPO Center completed a "Formal

Requirements Compliance Checklist".

On November 12, 2001, WIPO Center sent the

"Notification of Complaint and Commencement of Administrative

Proceedings", together with a copy of the Complaint via e-mail and

facsimile and by courier to the Respondent, and therefore to the

administrative, technical and billing contacts. A copy has also been

communicated to ICANN and to the Registrar, via e-mail. The Notification

indicated that December 2, 2001, was the deadline to submit a

Response to the Complaint according to the requirements described in Paragraph

5(a) of the Rules.

On December 3, 2001, WIPO Center sent the ¡°Notification of

Respondent Default¡± to the Respondent.

On December 18, 2001, WIPO Center sent to the Complainant

and the Respondent a "Notification of Appointment of Administrative Panel

and Projected Decision Date", which appointed Professor Hong Xue as the

panelist of the Single-Member Panel. The Panelist submitted a ¡°Statement of

Acceptance and Declaration of Impartiality and Independence¡±, and scheduling

January 1, 2002, as the date for issuance of the Panel decision,

notifying the above pursuant to Paragraphs 6(f) and 15(b) of the Rules.

On December 18, 2001, WIPO Center transferred the case

file to the Administrative Panel, with copy of the file transmission letter

being sent to the Complainant and the Respondent.

This Panel agrees with WIPO Center assessment and

considers that the Complaint was properly notified to the registered

domain-name holder, the technical contact, and the administrative contact as

provided for in Paragraph 2(a) of the Rules and that formal compliance within

the requirements of the Policy, the Rules, and Supplemental Rules was met.

The Panel has not received any further requests from the

Complainant or the Respondent regarding other submissions, waivers or

extensions of deadlines. There is no need as an exceptional matter, to hold any

in-person hearings as necessary for deciding the Complaint, as provided for in

Paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed

under the customary expedited nature contemplated for this type of domain name

dispute proceeding.

The language of the proceeding is English, as being the

language of the Domain Name Registration and Service Agreement, pursuant to

Paragraph 11(a) of the Rules, and also in consideration of the fact that there

is no express agreement to the contrary by the parties. In addition, pursuant

to Paragraph 10 (b) of the Rules and in consideration of the circumstances of

this administrative Proceeding, the Panel, for the purpose to ensure that each

Party is given a fair opportunity to present its case, takes into account the

evidential materials provided in Chinese.

4. Factual Background

4.1 The Complainant and The Trademark

The Complainant was established in China on

August 1, 1994.

Currently, Citizen Watch Co., Ltd. has about 17,530

employees and a total current asset of US$2,584,979,000. It has a total of about 25 branches in

Arabia, Austria, Brazil, Canada, China, England, France, Germany, Hong Kong,

India, Italy, Mexico, New Zealand, Panama, Spain, Switzerland, Taiwan, Thailand,

the United States of America, and other countries and regions.

Citizen Watch Co., Ltd. registered trademark ¡°CITIZEN¡± on March 25, 1980, with the Trademark

Office of the State Administration for Industry and Commerce of the People¡¯s

Republic of China. This trademark has been renewed and is valid until

today.

Citizen Watch Co., Ltd. registered the trademark ¡°Î÷⟳ǡ± (¡°CITIZEN¡± in Normal

Chinese Characters) on March 25, 1980, and the trademark ¡°Î÷Ìú³Ç¡± (¡°CITIZEN¡± in Simplified

Chinese Characters) on September 30, 1988, with the Trademark Office

of the State Administration for Industry and Commerce of the People¡¯s Republic

of China.

Citizen Watch Co., Ltd. has also used and promoted its ¡°Î÷Ìú³Ç¡± (¡°CITIZEN¡± in Chinese characters) trademark in the Chinese-speaking world, in particular with

clocks/watches.

In the ¡°Nationwide Major Concern

Trademark Protection List¡± promulgated by the People¡¯s Republic of the

Trademark Office of China State Administration for Industry and Commerce in

1999 and 2000, the marks ¡°Î÷Ìú³Ç¡± and ¡°CITIZEN¡± had been

listed as the foreign marks of the major concern protection status.

4.2 The Respondent and The Domain Name

According to the WHOIS database, the registration date of

the domain name <Î÷Ìú³Ç.com>

was on November 30, 2000, and the expiry date is on

May 9, 2002. The

registrant of the domain name is now and has always been Cheng Zhi Gang.

Both the Complaint and the Reply from Registrar in respect

of WIPO Center¡¯s Request for Registrar Verification stated that the domain name

<Î÷Ìú³Ç.com> was registered on

November 30, 2000, and expired on November 9, 2001. The

Panel, however, found through Registrar¡¯s WHOIS database on

December 25, 2001, that the current status of the domain name <Î÷Ìú³Ç.com> is active and the

registration for the domain name won¡¯t expire until May 9, 2002.

The Respondent did not submit the Response in the

Proceeding. No information other than the name and address is known in respect

of Respondent.

5. Parties¡¯Contentions

5.1 Complainant contentions may be briefly summarised as follows:

¡°Î÷Ìú³Ç¡± is its famous mark in the Chinese-speaking

world especially China.

On November 30, 2000, the Respondent registered the domain

name <Î÷Ìú³Ç.com> (¡°CITIZEN¡± in Chinese characters) under his own name. This domain name <Î÷Ìú³Ç.com>

is in all material aspects identical to the trademark and name of the

Complainant.

It is noted from the Technical Contact¡¯s address stated in

the Whois search dated February 1, 2001, that the Technical Contact

is based in China and therefore must be aware that ¡°Î÷Ìú³Ç¡± is a

famous mark in China. Further the

Respondent is not a licensee of the Complainant, nor is the Respondent

otherwise authorized to use the Complainant¡¯s mark. The Complainant is not aware of any other entity who may use

the mark ¡°Î÷Ìú³Ç¡± in a domain name legitimately in conducting

its own business without infringing the rights of the Complainant.

The Complainant is

aware of no connection whatsoever between the Respondent and the Complainant¡¯s

trademark ¡°Î÷Ìú³Ç¡±, nor any reason why the Respondent has ever

been legitimately known or identified in any way by that mark. The Respondent has no rights or legitimate

interest in respect of the domain name <Î÷Ìú³Ç.com>.

Further, the

Respondent has not developed a website using the domain name <Î÷Ìú³Ç.com>, and the domain name <Î÷Ìú³Ç.com> was unable to resolve into a valid IP

Address.

Deacons, on behalf of the Complainant, sent a letter by

e-mail to the Respondent on March 2, 2001, requested the Respondent

to transfer the disputed domain name to the Complainant. As there was no reply

from the Respondent, the same letter was sent by courier and by fax to the Respondent

on April 6, 2001.

Subsequent to this letter, several telephone calls were made to the

Respondent but he still could not be reached.

On May 27, 29 and 31 and on June 1, 2001, Deacons, on

behalf of the Complainant, received 5 e-mails in Chinese from liurunxia@yeah.net. These letters were signed under

¡°Tianjin¡±, ¡°Tianjin Xiao Cheng¡± and ¡°Xiao Cheng¡±. Tianjin is the city where the Respondent resides. ¡°Xiao Cheng¡± means ¡°Little Cheng¡±,

which was a customary way the Respondent called himself. According to the e-mail dated

May 29, 2001, the Respondent had asked the Complainant to pay him

US$500,000 in order for him to transfer the domain name <Î÷Ìú³Ç.com> to

the Complainant. The Respondent

claimed to have registered the domain name <Î÷Ìú³Ç.com> as

a means of protest against the Japanese because he hated Japanese

companies. The Respondent further

stated that he also owned other Japanese companies¡¯ domain names which he was

willing to transfer if sufficient money was paid to him.

The Respondent

registered and used the domain name <Î÷Ìú³Ç.com> in

bad faith for the following reasons:

(a) The Respondent has registered or acquired the domain name primarily for the purpose

of selling the domain name registration to the Complainant as the owner of the

¡°Î÷Ìú³Ç¡± trademark for a valuable consideration in excess of the out-of-pocket

costs directly related to the domain name. Likewise, the Respondent would expect a profit from the sale

of <Î÷Ìú³Ç.com> back to its trademark owner.

(b) The Respondent has registered or acquired the domain name as a means of protest against the

Japanese because he claims that he hates Japanese companies.

(c) The Respondent has engaged in a pattern of registering trademarks or service marks as domain names

including the domain name at issue in order to prevent the owners of such marks

from registering the domain names to reflect their marks.

(d) It follows therefore that the Respondent has no intention to use or demonstrate

preparations to use the domain name or a name corresponding to a domain name in

connection with a bona fide offering of goods and services.

5.2 Respondent did not file any Response.

6. Applicable Dispute

6.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the

dispute resolution Policy adopted by the Registrar.

6.2 To succeed in its Complaint, Complainant must show that each of the conditions of

Paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trademark or service mark

in which the Complainant has rights;

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

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

7. Discussion and Findings

7.1 Identical or Confusingly Similar Trademarks

Pursuant to Paragraph 4(a) of the Policy, Complainant must prove that the domain name is identical or

confusingly similar to a trademark or service mark in which the Complainant has

rights.

In line with such provision, the Complainant must prove two aspects,

i.e. it enjoys the trademark right; and the domain name in question is

identical with or similar to its trademark or service mark.

The Panel, in the first place, holds that the domain name

registered by Respondent is confusingly similar to the trademark ¡°Î÷Ìú³Ç¡±.

The Panel, in the second place, holds that the Complainant

enjoys the right over the trademark ¡°Î÷Ìú³Ç¡±,

though it is not the trademark registrant in China.

The Panel notices that the Complaint mentioned both the

Complainant ¡°Citizen Watch (China) Co., Ltd.¡± and another company ¡°Citizen Tokei Kabushiki Kaisha¡± (also known as Citizen

Watch Co., Ltd.). The Complainant provided its business license as the evidence

(See Annex 4 to the Complaint; it is in Chinese and no English translation).

The Panel finds from the

business license of the Complainant that it was a ¡°Chinese-Foreign Joint Venture¡±

(ÖÐÍâºÏ×ʾ­Óª) approved by the State Administration for Industry

and Commerce of the People¡¯s Republic of China on

August 10, 1994. The Complainant and Citizen Tokei Kabushiki Kaisha (also known

as Citizen Watch Co., Ltd.) are two independent enterprises. Citizen Tokei

Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.) was the registrant of

the trademarks ¡°Citizen¡±, ¡°Î÷⟳ǡ± and ¡°Î÷Ìú³Ç¡±

in China.

Although the Complainant is not the registrant of the

trademark ¡°Î÷Ìú³Ç¡± in China, the Panel holds that there should be a

relationship of trademark licensing between the Complainant and the trademark

registrant Citizen Tokei Kabushiki Kaisha (also known

as Citizen Watch Co., Ltd.). Under the Trademark Law of People¡¯s Republic of

China, any trademark registrant may, by signing a trademark license agreement,

authorize other persons to use the registered trademark. A trademark license

agreement does not need to be approved by the competent authority of China.

The Complainant was established with the authorization and

investment of Citizen Tokei Kabushiki Kaisha (also known as Citizen Watch Co.,

Ltd.), and the Complainant, as the Chinese subsidiary, has close connection

with Citizen Tokei Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.).

The Panel also notices that the letter by e-mail sent by Deacons to the

Respondent dated March 2, 2001, was on behalf of both ¡°Citizen Watch Co., Ltd.¡± and the Complainant (See

Annex 14 of the Complaint; the letter is in Chinese and no English

translation), which shows that the Complainant was authorized to stand for

¡°Citizen Watch Co., Ltd.¡± in respect of trademark protection matters in China.

Based on these fact, it is fair to presume that the Complainant has been

licensed in Chinese market to use and protect the registered trademark ¡°Î÷Ìú³Ç¡± for Citizen Tokei

Kabushiki Kaisha (also known as Citizen Watch Co., Ltd.).

The Panel therefore holds that the domain name in question

is confusingly similar to the trademark in which the Complainant has the right.

7.2 Legitimate Right or Interest

The Complainant contended that the Respondent had no legitimate

right or interest. Where, as here, the Complainant has raised a prime facie presumption of the

Respondent's lack of such right or interest, and Respondent has failed to rebut

that presumption, the Panel is entitled to accept Complainant's assertion. As

provided for by Paragraph 14 of the Rules, the Panel may draw such inference

from the Respondent¡¯s default, as it considers appropriate.

The Panel therefore finds that Complainant has established that

Respondent has no legitimate right or interest in the domain name.

7.3 Use and Registration in Bad Faith

A non-exhaustive list of what constitutes bad faith registration and

use is set out in Paragraph 4(b) of the Policy. The Complainant basically

relies upon 4(b)(i) and (ii), which read as follows:

For the purposes of Paragraph 4(a)(iii), the following

circumstances, in particular, but without limitation, if found by the Panel to

be present, shall be evidence of the registration and use of a domain name in

bad faith:

(i) circumstances indicating that the respondent has registered or the respondent has 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 that complainant, for

valuable consideration in excess of the respondent¡¯s 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.

The Panel finds that, in the ¡°Nationwide Major

Concern Trademark Protection List¡± promulgated by the Trademark Office of the

State Administration for Industry and Commerce of the People¡¯s Republic of

China in 1999 and 2000, the marks ¡°Î÷Ìú³Ç¡± and ¡°CITIZEN¡± had

been listed as the foreign marks of the major concern protection status. The various promotional materials provided by the Complainant also

show that the trademarks ¡°Citizen¡± and ¡°Î÷Ìú³Ç¡± had been widely promoted in the

world market including China.

The Respondent of this case registered the domain name <Î÷Ìú³Ç.com>

but has made no active use of it. The second-level of the domain name is

famous in China and, as the Panel has already found, the Respondent has no

rights or legitimate interests in respect of it.

Considering the emails received by Deacons, on behalf of the Complainant on May 27, 9 and 31 and

June 1, 2001, from the Respondent, the Panel holds that the

Respondent registered the domain name with the knowledge that ¡°Î÷Ìú³Ç¡± was the trademark of the Japanese company (¡°Citizen Watch

Co., Ltd.¡±), and the Respondent registered such domain name for the purpose of

protesting against the policies of Japanese government, rather than for his own

use.

According to the e-mail dated May 29, 2001, the Respondent

had asked the Complainant to pay him US$500,000 in order for him to transfer

the domain name <Î÷Ìú³Ç.com> to the Complainant, and stated that ¡°although

the Japanese are good businessmen, my price will not change.¡±

In consideration of

such request from the Respondent and other circumstances, the Panel holds that

the Respondent had the bad faith for registering the domain name

primarily for the purpose of selling the domain name registration to the

Complainant as the right owner of the ¡°Î÷Ìú³Ç¡± trademark for a valuable consideration in

excess of the out-of-pocket costs directly related to the domain name.

In the e-mail

dated May 29, 2001, the Respondent

stated, ¡°I have some other domain names

(besides ¡°Î÷Ìú³Ç.com¡±); (and)

if the Japanese want them, please contact me.¡± The Complainant therefore contended that the Respondent had the bad faith

for engaging in a pattern of registering trademarks

or service marks as domain names including the domain name at issue in order to

prevent the owners of such marks from registering the domain names to reflect

their marks. However, the Complainant failed to provide any evidence to prove

that the Respondent had engaged such a pattern of conduct. The Panel,

therefore, does not regard that the Respondent had the bad fait of that type.

The Panel therefore concludes that the Respondent had the

bad faith provided in Paragraph 4(a)(iii) of the Policy.

8. Decision

In light of the foregoing findings, namely that the domain

name is confusingly similar to a trademark in which the Complainant has rights

and that the Respondent has no rights or legitimate interests in respect of the

domain name and that the domain name was registered in bad faith, the Complaint

succeeds.

Pursuant to Paragraphs 4(i) of the Policy and Paragraph 15

of the Rule, the Panel directs that the domain name <Î÷Ìú³Ç.com>

be transferred to the Complainant.

Hong Xue

Sole Panelist

Dated: January 1, 2002