International Data Group, Inc. v. Lingjun

WIPO Arbitration and

Mediation Center

ADMINISTRATIVE PANEL

DECISION

International Data Group, Inc. v. Lingjun

Case No. D2004-0398

1. The Parties

The Complainant is International Data Group, Inc. of Framingham, Massachusetts,

United States of America, represented by Venable, LLP of Washington DC, United

States of America.

The Respondent is Lingjun of Chengdu, Sichuan, People’s Republic of China

2. The Domain Names and Registrar

The disputed domain names <pcworlddownload.com> and <pcworlddownload.net>

are registered with Bizcn.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on May 29, 2004. On June 1, 2004, the Center transmitted

by email to Bizcn.com, Inc. a request for registrar verification in connection

with the domain names at issue. On June 10, 2004, Bizcn.com, 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 June 18, 2004.

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

July 8, 2004. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on July 21, 2004.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter

on July 21, 2004. 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 Complainant, International Data Group, Inc., is a leading provider of print

and online publications, as well as conferences and information about computers

and information technology. The Complainant publishes more than 300 magazines

and newspapers including Bio-IT World, CIO, CSO, Computerworld, GamePro, InfoWorld,

Network World and PC World. The Complainant produces PC WORLD, a publication

on computers that is circulated in 65 countries, including the People’s Republic

of China. PC WORLD is also prominent online and PC WORLD is registered as a

domain name in over twenty ccTLD’s. These ccTLD domain names resolve to country–specific

websites featuring the local edition of PC WORLD. The Complainant owns more

than 180 trademark registrations worldwide for marks consisting of, or containing

as the dominant feature, PC WORLD.

5. Parties’ Contentions

A. Complainant

i. Identical or Confusingly Similar

The Complainant contends that it has rights in the mark PC WORLD and that the

disputed domain names are confusingly similar to the Complainant’s trademark.

In the present case, the Complainant argues that (a) the addition of a generic

term to a well-known mark is confusingly similar to that mark; (b) where the

mark concerned is also well-known, the likelihood of confusion is enhanced and

in this case, the Complainant contends that actual confusion has occurred; and

(c) the disputed domain names are being used for services similar to the Complainant’s

with an intention to confuse consumers.

With regard to (a), the Complainant argues that there is clear similarity of

the marks in their entireties as to appearance, sound, connotation and commercial

impression. The second level of the disputed domain names are combinations of

the PC WORLD mark and the generic term "download." The addition of

a generic term such as "download" to a mark, in particular a well

known mark, is considered "confusingly similar" and the Complainant

cites numerous UDRP cases in support of this contention.

With regard to (b), the Complainant contends that the PC WORLD mark is a famous

mark as it has been in continuous use since 1983. Consequently, consumers are

likely to believe that any domain name incorporating the PC WORLD mark is associated

with the Complainant. It is the Complainant’s argument that the Respondent’s

domain names are likely to confuse customers and cause them to believe mistakenly

that a domain name using PC WORLD in connection with a website that discusses

computer software, and uses the Complainant’s trademarks is associated with

the Complainant. The Complainant further adduces evidence in the form of an

e-mail to show that the Respondent’s website has already caused actual confusion

as the e-mail shows that a consumer is mistakenly contacting the Complainant

to complain about a problem that he had when downloading contents from the Respondent’s

website.

With regard to (c), the Complainant points out that the Respondent is using

the disputed domain names for websites that offer similar content to that provided

under the Complainant’s trademark PC WORLD such as discussions of, and downloads

of, the same kinds of software and related products that are reviewed and discussed

in the Complainant’s PC WORLD publications.

ii. Rights or Legitimate Interests

The Complainant contends that to the best of his knowledge, the Respondent

has no rights to any trademark consisting of the term "PC WORLD" in

any country and is using the disputed domain names with the intent, for commercial

gain, to misleadingly divert Complainant’s consumers to its websites or to disrupt

Complainant’s business.

iii. Registered and Used in Bad Faith

The Complainant contends that the disputed domain names are registered in bad

faith and are being used in bad faith. The Complainant contends that the Respondent

has registered the disputed domain names in bad faith because the Respondent

had constructive notice of the Complainant’s trademark rights by virtue of (a)

the Complainant’s trademark registrations in the United States, the People’s

Republic of China, and in many other countries; and (b) the Complainant’s use

of its trademark in print advertising and on its websites, as well as use of

the mark in the United States, the People’s Republic of China and other countries.

The Complainant further contends that the Respondent, being a national and resident

of the People’s Republic of China, would have had actual notice of the Complainant’s

rights because of the widespread circulation of PC WORLD in that country.

The Complainant argues that the disputed domain names resolve to an English-language

website offering reviews of products related to computers and the opportunity

to download various types of software. It is the Complainant’s contention that

given the nature of the Complainant’s PC WORLD magazine and companion online

publications, it is logical for consumers to assume that a site called PCWORLDDOWNLOAD

is sponsored by PC WORLD as a place to obtain products related to those reviewed

in the publications. In this way, the domain names are used solely to attract,

for commercial gain, Internet users to a website by creating a likelihood of

confusion with the Complainant’s registered trademark as to the source, sponsorship,

affiliation or endorsement of the Respondent’s websites. The Complainant argues

that by doing so, the Respondent has misappropriated the reputation and commercial

value of the PC WORLD trademark with a bad-faith intent to profit. Consequently,

the Complainant contends that the Respondent’s conduct is clear evidence of

bad faith as set forth in the UDRP at Paragraphs 4(b)(iii) and 4(b)(iv).

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. On June 11, 2004,

the Center sent a notification to the Complainant concerning the Language of

Proceeding. Pursuant to Rules, Paragraph 11, in the absence of an agreement

between the parties, or specified otherwise in the registration agreement, the

language of the administrative proceeding shall be the language of the registration

agreement. The Center has been informed by the registrar concerned that the

language of the registration agreement for the disputed domain names is Chinese.

Accordingly, the Center requested the Complainant to provide the Center with

satisfactory evidence of an agreement between the Complainant and the Respondent

to the effect that the proceedings should be in English. If the Complainant

could not do so, then the Center would request that the Complaint be translated

into Chinese and then submitted to the Center.

In response to the Center’s notification, the Complainant has, through its

legal representative, Ms. Janet F. Satterthwaite, filed two Supplemental Arguments

Regarding Language of Proceedings in accordance with the Policy on June 14, 2004,

and on June 16, 2004. The Complainant submits that according to Rules,

Paragraph 11, there is an important proviso that gives the Panel the authority

"to determine otherwise, having regard to the circumstances of the administrative

proceeding." As such, the Complainant contends that it is entitled to submit

legal arguments for the Panel to decide on the language of the proceedings.

The Complainant proceeded to cite a number of UDRP decisions in which a Panel

has allowed proceedings to be conducted in a language other than the language

of the registration Agreement if the circumstances showed that the Respondent

was capable of responding to the Complainant’s language: Groupe Industriel

Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO

Case No. D2003-0989; Biogen Idec MA Inc. v. Seong Choi, WIPO

Case No. D2003-0961; and Volvo Trademark Holding AB v. Enterprises ReVolvo,

WIPO Case No. D2004-0086. The Complainant argues

that, in the present case, the Respondent is also using English for its websites

and it is obvious that the Respondent is perfectly capable of communicating

in English. The Respondent’s website offers discussions of, and downloads of,

the same kinds of software and related products that are reviewed and discussed

in the Complainant’s PC WORLD publications. Everything on the website is in

English. On the other hand, the Complainant argues that being a corporation

located in Massachusetts, United States of America, it is not in a position

to conduct these proceedings in Chinese without a great deal of additional expense

and delay due to the need for translation of not only the Complaint, but also

all of the Annexes. Consequently, the Complainant argues that the balance of

hardship lies clearly in its favour.

Paragraph 11 of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the

Registration Agreement, the language of the administrative proceeding shall

be the language of the Registration Agreement, subject to the authority of the

Panel to determine otherwise, having regard to the circumstances of the administrative

proceeding."

Thus, the general rule is that the parties are at liberty to agree on the language

of the administrative proceeding. In the absence of this agreement, the language

of the Registration Agreement shall dictate the language of the proceeding.

However, the Panel reserves the right to decide otherwise having regard to the

circumstances of the case. The Panel’s discretion must be exercised in the spirit

of fairness and justice to both parties taking into consideration matters such

as command of the language, time and costs. It is important that the language

finally decided by the Panel for the proceeding must not be prejudicial to either

of the parties in his or her abilities to articulate the arguments for the case.

In this particular case, the contents of the website that bears the disputed

domain names are all in English. It is a reasonable assumption to make that

the Respondent is sufficiently well-versed in the language in order to conduct

his business over the website in English. If he is not, there were ample opportunities

for the Respondent to raise his objections on the choice of language, but he

has made no response whether on the issue of the language of the proceeding

or the allegations contained in the Complaint lodged by the Complainant. To

rule that the language of the proceeding is Chinese would cause substantial

delay in the proceedings and result in the Complainant incurring unnecessary

costs. Therefore, in consideration of the above circumstances and in the interest

of fairness to both parties, the Panel hereby decides that in accordance to

Paragraph 11 of the Rules, English shall be the language of the present administrative

proceeding.

B. Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Names are identical or confusingly similar to a trade mark

or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the

Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used

in bad faith.

Having reviewed the documents adduced by the Complainant, the Panel is satisfied

that the Complainant has established its rights in the trademark PC WORLD and

that the disputed domain names <pcworlddownload.com> and <pcworlddownload.net>

are confusingly similar to the Complainant’s trademark. As mentioned above,

the Complainant owns numerous trademark registrations in several countries for

its PC WORLD mark and this mark has also been registered as domain names in

twenty ccTLDs.

The disputed domain names are made up of the Complainant’s mark and the generic

word "download." The Panel finds that the addition of the word "download"

to the Complainant’s mark PC WORLD does not serve to distinguish the Respondent’s

domain names from the Complainant’s mark. Instead, the Panel accepts the Complainant’s

submissions that in the present case, the addition of the generic word "download"

to its widely known mark PC WORLD is likely to confuse customers and cause them

to believe mistakenly that a domain name using PC WORLD in connection with a

website that discusses computer software, and uses the Complainant’s trademarks

is associated with the Complainant.

C. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that

the Respondent has no rights or legitimate interests in the domain names. On

the issue of burden of proof, a number of WIPO decisions have held that "once

a Complainant establishes a prima facie evidence showing that none of

the three circumstances establishing legitimate interests or rights applies,

the burden of production on this factor shifts to the Respondent to rebut the

showing." See Universal City Studios, Inc. v. David Burns and

Adam-12 Dot Com, WIPO Case No. D2001-0784

and International Hospitality Management - IHM S.p.A v. Enrico Callegari

Ecostudio, WIPO Case No. D2002-0683.

The Complainant asserts that to the best of its knowledge, the Respondent has

no rights to any trademark consisting of the term "PC WORLD" in any

country and is using the domain names with the intent, for commercial gain,

to misleadingly divert Complainant’s consumers to its websites or to disrupt

Complainant’s business. The Panel is of the view that the Complainant has established

a prima facie case and it is for the Respondent to rebut the allegations.

Unfortunately, the Respondent has not submitted a Response and consequently,

the Respondent has failed to invoke any of the circumstances that could have

demonstrated any rights or legitimate interests in the domain names under Paragraph

4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no rights or legitimate

interests in the domain names pursuant to Paragraph 4(b) of the Policy.

D. Registered and Used in Bad Faith

On the evidence adduced before the Panel, the Panel finds that the Complainant’s

trademark PC WORLD is very well known in many countries including the People’s

Republic of China wherein the Respondent resides. Therefore, the Panel accepts

the Complainant’s submission that the Respondent had actual or constructive

notice of the Complainant’s trademark rights at the time of the registration

of the domain names or thereafter.

It is important to note that the disputed domain names <pcworlddownload.com>

and <pcworlddownload.net> resolve to the Respondent’s website which is

in English and it offers reviews of products relating to computers and provides

the opportunity to download various types of software. This, coupled with the

fame of the Complainant’s mark PC WORLD, may cause Internet users to assume

that the Respondent’s site called PCWORLDDOWNLOAD is sponsored by or in some

way affiliated with the Complainant. The Panel reasonably finds that the Respondent

is, in using the disputed domain names, seeking to exploit the goodwill in the

Complainant’s mark PC WORLD to attract Internet users intentionally to the Respondent’s

website for purposes of commercial gain. This constitutes bad faith use and

registration under Paragraph 4(b)(iv) of the Policy.

In the light of the above, the Panel concludes that the Complainant has proven

bad faith in registration and use on the part of the Respondent.

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, <pcworlddownload.com>

and <pcworlddownload.net> be transferred to the Complainant.

Susanna H.S. Leong

Sole Panelist

Dated: August 4, 2004

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