Golden Harvest Film Productions Limited; Golden Harvest (Marks) Limited v. Deng Yaonan

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Golden Harvest (Marks) Limited

and Golden Harvest Film Productions Limited v. Deng Yaonan

Case No. D2003-0756

1. The Parties

The Complainants are Golden Harvest (Marks) Limited, Tortola, British Virgin Islands;

and Golden Harvest Film Productions Limited, Hong Kong, SAR of China, represented

by Johnson Stokes & Master, Hong Kong, SAR of China.

The Respondent is Deng Yaonan, Guangzhou, China.

2. The Domain Names and Registrar

The disputed domain names <¼ÎºÌ.com> (Chinese traditional characters for

<Golden Harvest.com>) (RACE Language Encoding: bq ¡ª3blas6n6.com)

and <¼ÎºÌ.com> (Chinese simplified characters for <Golden Harvest.com>)

(RACE Language Encoding: bq ¡ª3blas6n6.com) are registered with Network

Solutions, Inc.[1]

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ¡°Center¡±)

on September 25, 2003. On September 29, 2003, the

Center transmitted by email to Network Solutions, Inc. a request for registrar

verification in connection with the domain names at issue. On October 2, 2003,

Network Solutions, Inc. 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 October 3, 2003.

In accordance with the Rules, Paragraph 5(a), the due date for Response was

October 23, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent¡¯s default on October 31, 2003.

The Center appointed Hong Xue as the Sole Panelist in this matter on October 31, 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 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

The mark ¼ÎºÌ (Chinese equivalent for Golden Harvest) has since 1970 been

shown or displayed in films or products produced, distributed, exhibited and

marketed by the Complainants and/or their related companies. The Complainants

have obtained the registrations for the mark ¼ÎºÌ (Chinese equivalent for Golden

Harvest) in respect of different classes of goods and services in different

countries. In China, the Complainants¡¯ mark ¼ÎºÌ was registered with the

Chinese State Administration for Industry and Commerce as early as 1995.

5. Parties¡¯ Contentions

A. Complainant

The contested domain names are identical or confusingly similar to trademarks

or service marks in which the Complainants have rights.

The trademarks relied upon by the Complainants are the registrations and applications

for registration for the mark ¼ÎºÌ (Chinese equivalent for Golden Harvest) which

the Complainants have obtained or filed in respect of different classes of goods

and services in different countries.

The mark ¼ÎºÌ (Chinese equivalent for Golden Harvest) has since 1970 been

used as part of the company name of Golden Harvest (H.K.) Limited, the predecessor

of rights in the mark ¼ÎºÌ and a company set up by Mr. Chow Ting Hsing Raymond

who is a shareholder and director of the Complainants.

The mark ¼ÎºÌ (Chinese equivalent for Golden Harvest) has since then been shown

or displayed in films or products produced, distributed, exhibited and marketed

by the Complainants and/or their related companies.

Further, the mark ¼ÎºÌ has been used as part of the company name of the group

of companies of the Complainants.

Golden Harvest Film Productions Ltd. has also registered, inter alia,

the Chinese domain names <¼ÎºÌŠÊ˜·¼¯ˆF.¹«Ë¾>, <¼ÎºÌ‡øëH.¹«Ë¾>, <¼ÎºÌÖЇø.¹«Ë¾>,

<¼ÎºÌÏã¸Û.¹«Ë¾> and <¼ÎºÌëŠÓ°.¹«Ë¾> on September 24, 2002.

The Complainants and their group of companies carry on business of production,

distribution, marketing and exhibition of films and related products.

The first movie in which the mark ¼ÎºÌ was conspicuously displayed at the beginning

of the film and was extensively publicised was a film called ¹íÅ­´å (The Angry

River). The film was produced in 1970 and was released in May 1971.

As a result of continuous use of the mark ¼ÎºÌ (the ¡°Mark¡±), being both the dominant

part of the names of the Complaints¡¯ group of companies worldwide, and being

extensively used and appearing extensively on movies and products of the Complainants¡¯

group of companies which are produced, distributed, exhibited and marketed worldwide,

the Mark is associated exclusively with the Complainants¡¯ group of companies

and none other. It should be noted that the Mark is an invented mark with

no dictionary meaning. Imitation by the Respondent is therefore obvious.

Comparing the contested domain names with the Mark, it is apparent that except

for the generic top level domain designation ¡°.com¡±, the substantial and substantive

part of the contested domain names (both in traditional and simplified characters)

is ¡°¼ÎºÌ¡± which is identical to the Mark as registered, applied for and used by

the Complainants for a long period of time worldwide.

The Respondent has no rights or legitimate interests in respect of the contested

domain names, and the contested domain names were registered and are being used

in bad faith.

The Respondent is an individual whose name does not bear the Mark nor any part

of the contested domain names.

On December 5, 2000, the Respondent contacted the Complainants informing

the Complainants that he has registered the contested domain names and enquired

whether the Complainants were interested in using the contested domain names.

The Respondent ended the email stating that he was prepared to transfer the

contested domain names to the Complainants and asked for a reply.

Upon the Complainants¡¯ indication that they wished to have the domain names

transferred back to them, the Respondent wrote back an email on April 6, 2001,

enquiring of the amount of transfer fees which the Complainants were prepared

to give to the Respondent and asking the Complainants to provide a contact for

negotiation.

Subsequently, the Respondent wrote to the Complainants requesting that they

negotiate the transfer fees and repeatedly pressed for a reply from the Complainants

whether the transfer fee quoted was acceptable.

On October 31, 2001, in reply to the Complainants¡¯ request for an

indication of the transfer fee required, the Respondent quoted US$30,000 per

domain name, the price being negotiable.

On June 26, 2002, in view of the absence of confirmation from the

Complainants, the Respondent reduced its offer to transfer the contested domain

names to the Complainants at the fees of RMB30,000 for both domain names.

The Respondent has not built up its own website under the contested domain

names. Instead, when asked if the Respondent was the owner of the contested

domain names, the Respondent indicated that it had directed the contested domain

names to the Complainants¡¯ website ¡°www.goldenharvest.com¡±.

The Respondent is engaged in the dealings of domain names. In his email

of November 29, 2001, to the Complainants, he mentioned that some

other firm had asked about the contested domain names and that he wished to

have a reply from the Complainants in time so that he would not lose a business-opportunity.

Although the Respondent contacted the Complainants on December 5, 2000,

the Respondent¡¯s registration certificates for the contested domain names show

that one of the contested domain names, <¼ÎºÌ.com> (Chinese traditional

character domain name) was registered on October 29, 2001, subsequent

to the date of first contact. The Complainants submitted that the Respondent¡¯s

act in registering one further contested domain name after first contacting

and confirming the interests of the Complainants to have the contested domain

names transferred back shows that the Respondent¡¯s registration for the contested

domain names was done in bad faith.

The Complainants submit that the Respondent has no legitimate interests in

the contested domain names and the registrations were a bad-faith pre-emptive

registration the sole purpose of which was for selling, renting, or otherwise

transferring the contested domain names for profit. As can be seen, the

Respondent¡¯s offer to sell the contested domain names to the Complainants was

at a price which is in excess of any possible out-of-pocket expenses which the

Respondent has incurred in direct relation to the contested domain names.

The reduction in price from a denomination of US dollars to RMB fortifies the

fact that the Respondent clearly seeks only to make a quick profit. Moreover,

the Respondent¡¯s registration has in fact obstructed the Complainants from reflecting

the Mark and services in or under the corresponding contested domain names.

The Complainants say that they and their group of companies have the right

to use the Mark.

B. Respondent

The Respondent did not reply to the Complainant¡¯s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy, a complainant must prove that

the domain names are identical or confusingly similar to a trademark or service

mark in which the complainant has rights.

In line with such provision, the Complainants must prove two aspects, i.e.

they enjoy the trademark rights; and the disputed domain names are identical

with or similar to their trademarks or service marks.

The Panel finds that the Complaint successfully proves these two aspects, namely,

the disputed domain names <¼ÎºÌ.com> (Chinese traditional characters) and

<¼ÎºÌ.com> (Chinese simplified characters), except for the generic top-level

domain designation ¡°.com¡±, are identical with the Complainants¡¯ registered mark

¼ÎºÌ.

The Panel therefore holds that the Complaint fulfills the condition provided

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

B. Rights or Legitimate Interests

The Complainants contended that the Respondent had no rights or legitimate

interests. Where, as here, the Complainants have 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 Complainants¡¯

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 Complaint fulfills the condition provided in

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

C. Registered and Used 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, including the 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.

The Panel finds that the Respondent¡¯s intention was clearly evidenced by the

email communications between the Respondent and the Complainants from December 5, 2000,

to September 2002, in particular the following facts:

- The Respondent firstly emailed to the Complainants to offer to sell the disputed

domain name <¼ÎºÌ.com> (Chinese simplified characters), though it acknowledged

in the same email that the Complainants were a ¡°renowned movies production company¡±.

- The Respondent demanded from the Complainants initially US$30,000 per domain

name and later RMB30,000 for both domain names as the fee for transfer of the

domain name.

- The Respondent mentioned that some other firm wrote to him for the disputed

domain names and that he wished to have a reply from the Complainants in time

so that he would not lose other chance of business.

- The Respondent registered the domain name <¼ÎºÌ.com> (Chinese simplified

characters) on November 10, 2000; and, after contacting and

negotiating with the Complainants, registered the domain name <¼ÎºÌ.com>

(Chinese traditional characters) on October 29, 2001.

Therefore, the Respondent obviously registered the disputed domain names primarily

for the purpose of selling to the Complainants or to a competitor of the Complainants,

for valuable consideration in excess of the Respondent¡¯s documented out-of-pocket

costs directly related to the domain names.

Based on the above finding, the Panel rules that the Respondent registered

and used the domain names in bad faith pursuant to Paragraph 4(b)(i) of the

Policy and thus the Complaint fulfills the condition provided in Paragraph 4(a)(iii)

of the Policy.

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 names, <¼ÎºÌ.com>

(Chinese simplified characters) and <¼ÎºÌ.com> (Chinese traditional characters)

be transferred to Golden Harvest (Marks) Limited.

Hong Xue

Sole Panelist

Dated: November 14, 2003

[1] Chinese

characters have two forms of expression, i.e. traditional characters and

simplified characters. Although most characters¡¯ simplified form is

different from their traditional form, there are some characters whose simplified

form is identical with their traditional form. The second-level domain

¡°¼ÎºÌ¡± in the disputed domain name belongs to the latter. The simplified

form of ¡°¼ÎºÌ¡± is identical with its traditional form, and the RACE Language

Encoding for the two forms of ¡°¼ÎºÌ¡± is the same, i.e. <bq¡ª3blas6n6.com>.

Although the Respondent was able to register the two disputed domain names

in ¡°two¡± forms of ¡°¼ÎºÌ,¡± they are actually the same characters to the Chinese

language users.