Morgan, Société Anonyme v. Chin Shyr Tarng Watch

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Morgan, Société Anonyme v. Chin Shyr Tarng Watch Industrial Co., Ltd.

Case No. D2002-0121

1. The Parties

The Complainant in this administrative proceeding is Morgan, Société

Anonyme, head office 10, Rue Etienne Marcel, 75002 Paris,

France; principal place of business 36/38, Ave. Paul V. Couturier,

93120 La Courneuve, France.

Complainant’s authorized representative in this administrative proceeding

is Cabinet Plasseraud, 84, Rue D'Amsterdam, 75440 Paris,

Cedex 09, France.

The Respondent is Chin Shyr Tarng Watch Industrial Co, Ltd. 1Fl.,

No.11, Alley 14, Lane 82, Lungchiuan St., Banchiau City,

Taipei, Taiwan 220, Province of China.

2. The Domain Name and Registrar

The Domain Name the subject of this Complaint is <morgan-watch.com>.

The Registrar of the Domain Name is BulkRegister, Inc.

3. Procedural History

3.1. The Complaint in respect of the disputed Domain Name was received

by the World Intellectual Property Organization Arbitration and Mediation

Center (WIPO Center) by email on February 6, 2002 and in hard

copy on February 7, 2002. Complainant states that a copy of

the Complaint was sent to Respondent by DHL courier on February 6, 2002;

and a copy was sent to the concerned Registrar by DHL courier on February 6, 2002.

3.2. On February 19, 2002, verification was received from the Registrar,

BulkRegister Inc., that the name of the Registrant of the disputed

Domain Name <morgan-watch.com> is: Chin Shyr Tarng Watch Industrial

Co, Ltd. 1Fl., No.11, Alley 14, Lane 82, Lungchiuan St.,

Banchiau City, Taipei, Taiwan 220, Province of China. The Administrative

Contact is: Fen Hsia Huang, Chin Shyr Tarng Watch Industrial Co, Ltd. 1Fl.,

No.11, Alley 14, Lane 82, Lungchiuan St., Banchiau City,

Taipei, Taiwan 220, Province of China. The Registrar confirmed that the

Uniform Domain Name Dispute Resolution Policy applies to the disputed

Domain Name.

3.3. On February 19, 2002, WIPO Center determined (and the Administrative

Panel has subsequently accepted) that the Complaint satisfied the formal

requirements of the Uniform Domain Name Dispute Resolution Policy (Policy),

the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) approved

by the Internet Corporation for Assigned Names and Numbers (ICANN) and

the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (Supplemental Rules).

3.4. On February 20, 2002 WIPO Center made a printout of the webpage

obtained by accessing the website corresponding to the disputed Domain

Name.

3.5. On February 20, 2002, Formal Notification of Complaint and Commencement

of Administrative Proceeding (with enclosures) was sent by WIPO Center

to Respondent and Respondent's Technical Contact by post/courier (with

enclosures) and email (without attachments), and to Respondent's Administrative

Contact at its stated fax number which was not reachable. The Formal Notification

was copied to Complainant, to ICANN and to the Registrar by email.

3.6. No Response was received from Respondent by the due date of March 12, 2002

and a Notification of Respondent Default was sent to Complainant, Respondent

and Respondent's Administrative Contact and Technical Contact on March 13, 2002.

3.7. On March 21, 2002, Dr Clive Trotman, having provided the WIPO

Center with a Statement of Acceptance and Declaration of Impartiality,

was appointed as a single member Administrative Panel and notification

was sent by email to Complainant, Respondent and the Administrative Panel.

An electronic copy of the Complaint was sent by email to the Administrative

Panel on March 21, 2002, and the hardcopy of the Case File was

sent by courier.

4. Factual Background

4.1. Complainant, according to its certified Complaint and Annexes,

is a French Company trading in a wide variety of merchandise including

watches and fashion items. The Company can trace its history back to 1947.

It has expanded considerably since about 1988 and is now represented in

50 countries through about 500 outlets and boutiques.

4.2. Mainly since the mid-1990s, the Complainant has registered its

trademark MORGAN, usually associated with stylized heart symbols, in many

countries and in connection with many classes of fashion goods including

watches.

4.3. The Complainant Company has licensed its trademark MORGAN to

other corporations across the world. Among other licenses, a license to

a Company in Taiwan covering watches has been in force since March 3, 1998.

The trade in watches under this license has been substantial and valuable.

4.4. Watches are sold bearing the MORGAN trademark clearly emblazoned

across the dial and are prominently advertised in Taiwan through the Complainant's

authorized licensee. However, the Complainant did not initially register

its trademark in Taiwan. On January 8, 1999, the Respondent

Chin Shyr Tarng Watch Industrial Co, Ltd., evidently a Taiwanese company

engaged in the business of watches, applied to register a trademark in

Taiwan embodying the word MORGAN.

4.5. On August 16, 2000, Complainant filed proceedings with the Intellectual

Property Office, Taiwan, to have the Respondent's registration of the

trademark MORGAN invalidated. Complainant won the case in a Decision issued

on July 3, 2001 and also won the case when the Respondent took

the matter to appeal.

4.6. Respondent's registration of the disputed Domain Name shows a

record-created date February 20, 2001, which was later than

Complainant had filed proceedings with the Taiwan Intellectual Property

Office to have the Respondent's trademark MORGAN invalidated (August 16, 2000)

and before the date of issuance of the Decision (July 3, 2001).

5. Parties’ Contentions

A. Contentions of Complainant

5.1. The contentions of Complainant include (paragraphs 5.2-5.6 below)

that:

5.2. The dispute is properly within the scope of the Uniform Domain

Name Dispute Resolution Policy (the Policy). The registration agreement,

pursuant to which the Domain Name being the subject of this Complaint

was registered, incorporates the Policy by reference.

5.3. The disputed Domain Name is confusingly similar to the MORGAN

trademark in which Complainant has rights.

5.4. Respondent has no rights or legitimate interest in the disputed

Domain Name.

5.5. Respondent’s registration and use of the disputed Domain Name

is in bad faith in terms of the Policy. The Domain Name was registered

primarily for the purpose of disrupting Complainant's business and to

attract, for financial gain, Internet users to the Registrant’s website

or other on-line location, by creating a likelihood of confusion with

the Complainant’s mark as to the source, sponsorship, affiliation, or

endorsement of the Registrant’s web site or location or of a product or

service on the Registrant’s web site or location.

5.6. The remedy requested by Complainant is that the disputed Domain

Name be transferred to Complainant.

B. Contentions of Respondent

5.7. No Response has been received from Respondent.

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Policy states:

"You are required to submit to a mandatory administrative proceeding

in the event that a third party (a "complainant") asserts to

the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a

trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of

the domain name; and

(iii) your domain name has been registered and is being used in

bad faith."

6.2. Complainant has made the relevant assertions as in 6.1 above.

This dispute is properly within the scope of the Policy and the Administrative

Panel has jurisdiction to decide the dispute.

Whether the Domain Name is Identical or Confusingly Similar to a Trademark

6.3. The Domain Name subject to this Complaint is <morgan-watch.com>.

Considering that Complainant not only holds the trademark MORGAN but uses

it prominently on watches displaying the same brand name, there can be

no doubt that the disputed Domain Name is confusingly similar and effectively

identical to Complainant's trademark. The inclusion of ".com"

or equivalent in a Domain Name is inevitable and of no consequence for

the determination of similarity. The Panel finds for Complainant in terms

of Paragraph 4(a)(i) of the Policy.

Whether Respondent Has Rights or Legitimate Interests in Respect of the

Domain Name

6.4. Notwithstanding that this Complaint is uncontested, Complainant

is required to establish that Respondent has no rights or legitimate interests

in respect of the disputed Domain Name. Complainant has provided a copy

of the Decision of the Intellectual Property Office, Ministry of Economic

Affairs, Taiwan, to have the Respondent's registration of the trademark

MORGAN invalidated. Complainant won the case in a clear and unequivocal

Decision issued on July 3, 2001.

6.5. The Decision referred to in 6.4 above was appealed by Respondent.

The present Complaint states on page 8, "The Respondent has brought

an Appeal in August 2001 which has been successful (annex 12) ...".

The Panel was not helped by being provided in Annex 12 with what is presumably

the Appeal Decision written in 8 pages of Chinese characters, in contravention

of Rules, 11. Only an attached copy of a letter dated January 9, 2002

from Complainant's Taiwan lawyers to Complainant's Paris lawyers alerted

the Panel to the fact that the appeal was successful for the Complainant

and went against the Respondent, otherwise the Decision in the present

Complaint may well have been different from what it is.

6.6. On the basis that Complainant has twice succeeded in Taiwanese

proceedings in establishing its rights to the trademark MORGAN, has asserted

that Respondent has no rights or legitimate interests in the disputed

Domain Name and that this has not been denied by Respondent, and that

Respondent has not countered with any defense including those provided

for (without limitation) by Paragraph 4(c) of the Policy, the Panel finds

that the Respondent has no rights or legitimate interests in the disputed

Domain Name in the terms of Paragraph 4(a)(ii) of the Policy.

Whether Domain Name Has Been Registered and Is Being Used in Bad Faith

6.7. Paragraph 4(a)(iii) of the Policy requires Complainant to prove

that the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) provides four illustrative circumstances (without limitation)

that shall be evidence of the registration and use of a Domain Name in

bad faith.

6.8. There is no evidence that Respondent has attempted to sell, rent

or transfer the disputed Domain Name registration to the Complainant in

the manner contemplated by Paragraph 4(b)(i) of the Policy.

6.9. No evidence has been offered to the effect that Respondent has

engaged in a pattern of blocking Domain Names to make them unavailable

to a trademark holder in the terms of Paragraph 4(b)(ii) of the Policy.

6.10. Paragraph 4(b)(iii) would require evidence that the Domain Name

was registered primarily for the purpose of disrupting a competitor's

business. The word disrupt is defined (The Concise Oxford Dictionary,

3rd ed.) as shatter, separate forcibly; (disruption) bursting asunder,

violent dissolution (etc). Possession by Respondent of a Domain Name thereby

causing unquantified inconvenience to Complainant is not sufficient to

qualify as disruption of Complainant's business.

6.11. Paragraph 4(b)(iv) recognizes as evidence of bad faith the circumstance

in which Respondent, by using the Domain Name, has intentionally attempted

to attract, for commercial gain, Internet users to its 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 Respondent's

web site or location or of a product or service thereon. Paragraph 4(b)(iv)

requires evidence of what has happened rather than of the Respondent's

intentions. A printout of the first page of the website found in response

to the disputed Domain Name made on February 20, 2002 was provided

by WIPO Center. A longer printout of the website made on October 15, 2001

by Complainant (Annex 1) contains at least four different pages, includes

the word MORGAN against a stylized heart symbol and contains pictures

of watches. There can be no other plausible explanation for Respondent's

actions than an attempt to divert traffic to Respondent's website for

financial gain by confusion in the terms of Paragraph 4(b)(iv) of the

Policy and the Panel finds for Complainant under this heading.

6.12. Criteria of bad faith are not limited to those exemplified in

Paragraphs 4(b)(i), (ii), (iii) and (iv) of the Policy. In the present

proceeding the Respondent: (1) registered the disputed Domain Name after

proceedings had been filed against it in the Intellectual Property Office,

Taiwan over the right to use the corresponding trademark; (2) must have

known about those proceedings since it argued against them and took the

case to appeal; (3) chose a Domain Name that was blatantly in conflict

with Complainant's trademark and business and not in any sense conciliatory

or even marginally dissimilar; (4) presented a website that not only portrayed

the trademark name MORGAN to which Respondent was not entitled but also

employed a heart symbol in a manner evoking Complainant's trademark and

displayed watches. On the totality of the evidence the Panel finds bad

faith proved in terms of Paragraph 4(a)(iii) of the Policy.

6.13. In summary, as concluded in 6.3 above Complainant succeeds under

Paragraph 4(a)(i) of the Policy. As concluded in 6.6 above, Complainant

succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in alternatively

6.11 and 6.12 above, Complainant succeeds under Paragraph 4(a)(iii) of

the Policy. The Complainant has proven all three elements required by

Paragraph 4(a) of the Policy and the Administrative Panel awards its decision

in favor of the Complainant and against the Respondent.

7. Decision

The Decision of the Administrative Panel is that the disputed Domain Name

<morgan-watch.com> is confusingly similar to the trademark MORGAN

in which Complainant has rights; that Respondent has no rights or legitimate

interests in the disputed Domain Name; and that Respondent has registered

and is using the disputed Domain Name in bad faith. The Domain Name <morgan-watch.com>

shall be transferred to the Complainant.

Dr Clive N. A. Trotman

Sole Panelist

Dated: April 4, 2002