WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Comweld Group Pty. Limited. v. Comco Industries Co. Ltd.
Case No. D2001-0290
1. The Parties
The Complainant is Comweld Group Pty. Limited, a corporation organized under the laws of Victoria, Australia, with a principal place of business at 71 Gower Street, Preston, Victoria, Australia, 3072.
The Respondent is Comco Industries Co. Ltd. of Shanghai, China, with an address at No. 1303 West Yan An Road, Shanghai, China 200050.
2. The Domain Name and Registrar
The domain name in dispute is <cigweld.com>.
The registrar of the disputed domain name is Xin Net Corp (China) with an URL at www.chinadns.com. Xin Net Corp (China) is accredited by Internet Corporation for Assigned names and Numbers (ICANN) under an agreement with ICANN.
3. Procedural History
A summary of the procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by submitting a Complaint via e-mail without annexures on February 27, 2001, and a hardcopy of the Complaint with annexures on February 27, 2001, via courier to WIPO Arbitration and Mediation Center (WIPO). Payment of the required fee was submitted with the hardcopy of the Complaint.
(b) Also, on February 27,2001, a copy of the Complaint without annexures was sent to the Respondent via e-mail to "email@example.com", by fax to 86-21-6212 4038 and a hard copy with annexures was sent via post to the Respondent at the address at No. 1303 West Yan An road, Shanghai, China, listed for the Respondent in the UWWHOIS database.
(c) Further, on February 27, 2001, a copy of the Complaint was also sent to the registrar via e-mail at "firstname.lastname@example.org" without annexures and with annexures via facsimile to 86-10-6849 2758.
(d) On March 2, 2001, WIPO notified Xin Net Corp (China) (Registrar) that a complaint was filed against Comco Industries Co. Ltd. for the domain name <cigweld.com>. On March 3, 2001, the Registrar confirmed that the disputed domain name was registered by the Respondent and that the disputed domain name is subject to the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP). The Registrar further confirmed the postal address and e-mail address listed for the Respondent. On March 7, 2001, upon further inquiry, the Registrar informed WIPO that the Registration Agreement was in Chinese.
(e) On March 30, 2001, WIPO notified the Complainant that the language of the proceeding must be in Chinese unless consent of the Respondent was obtained. On March 29, 2001, Complainant's representative requested consent of the Respondent by e-mail. A second request was sent by e-mail on April 17, 2001. The Respondent did not respond to either request.
(f) On May 31, 2001, a copy of the Complaint in Chinese was forwarded to WIPO by e-mail and a hard copy thereof with annexures 1-11 was forwarded by post to the Center, and a copy was forwarded to the Respondent by e-mail, by facsimile with a hard copy with the Annexures by post. A copy of the Chinese complaint was also forwarded by e-mail and post to the Registrar.
(g) On June 19, 2001, WIPO notified Complainant that there are some differences between the English Complaint and the Chinese Complaint and requested Complainant to identify the differences. Complainant's representative indicated that the authorized representative was changed to Sue Gilchrist in Sydney and the display of Annexures 10 and 11 were updated to May 9, 2001, and the date of the forwarding of the Complaint was changed to May 31, 2001. Further, a Chinese translation of the UDRP Policy was provided for Annexure 2. These differences do not affect the substance of the Complaint.
(h) The Formal Compliance Requirements Checklist was completed by WIPO and on June 25, 2001, Respondent was notified of the initiation of the administrative proceeding and that the due date of a response to the Complaint was 20 days after receipt of the notification. The Respondent was notified by e-mail, by facsimile and by courier. The due date of the response was July 14, 2001.
(i) Respondent submitted a response in English on July 22, 2001, eight days after the response was due. A Notification that the response was late was sent to Respondent via e-mail on July 24, 2001. The Respondent was advised that it is at the sole discretion of the Panelist to decide whether the response would be considered.
(j) An administrative panel consisting of one single panelist was appointed, as requested by the Complainant and agreed to by the Respondent. A Statement of Acceptance and Declaration of Impartiality and Independence was received from the appointed panelist, Maria C.H. Lin. The administrative panel was properly constituted. The proceedings, up to panel appointment, have been conducted in Chinese in light of the Chinese Registration Agreement. However, as the Complaint was originally filed in English and subsequently translated into Chinese and the Response was also filed in English, the Panel, upon its authority vested under UDRP Rules, Paragraph 11(1), determines that the decision should be in English.
(k) No further submissions were made by the Complainant or the Respondent.
(l) The deadline for the Panel to issue a decision is August 31, 2001.
4. Factual Background
The Respondent did not submit a timely response to the Complaint. The facts, supported by the Annexures 1 to 11 to the Complaint and the confirmation by Xin Net Corp. (China), are determined to be as follows:
Complainant is the exclusive licensee of Commonwealth Industrial Gases Limited, the owner of eleven Australian registrations for the marks CIGWELD and CIGWELD Device for a variety of goods and services including welding, brazing and soldering fluxed in Class 1, welding, brazing and soldering metallic powders and rods in Class 6, apparatus for welding in Class 9, apparatus and machines for cutting and brazing in Class 8, apparatus and machines for cutting, welding and brazing and heat treatment of metals in Class 7, construction and repair services for welding equipment in Class 37 and technical and consultant services for gas, electric welding equipment and materials in Class 42. The mark has been registered and in use since 1989. A copy of the License Agreement between Commonwealth Industrial Gases Limited and Complainant was enclosed [Complaint Annexure 3b].
Complainant is also the exclusive licensee or owner of registrations of the mark CIGWELD in New Zealand, Chile, China, Hong Kong, Indonesia, Malaysia, Mexico, Singapore, South Korea, Sri Lanka, Taiwan, Thailand and United States. In particular, since 1996, the mark was also registered in China by the Complainant, No. 820564 for welding, brazing and soldering powders and rods in Class 6, No. 83508 for electric welding apparatus and parts in Class 9 and No. 868653 for gas welding, cutting and brazing equipment in Class 7. Copies of the Australian and Chinese registrations have been provided [Annexures 3a and 3c].
The disputed domain name <cigweld.com> has been registered with Xin Net Corp. since August 1, 2000. Ardy Meng of Comco Industries Co. Ltd., the Respondent, is listed as the administrative contact and Jinsong Zhou of Shanghai NetUnion Technologies Co. Ltd. is listed as the technical contact. The record was last updated on December 11, 2000. The domain name is owned by the Respondent [Complaint Annexure 1].
The registrar, Xin Net Corp. has been accredited by ICANN and the disputed domain name is subject to UDRP. A copy of the Registration Agreement is available on the web site <paycenter.com.cn/tl-e2.htm> [Complaint, Annexure 2].
Printed copies of the contents of the web site, <cigweld.com> show the following. On September 11, 2000, it is directed to a web site, <cncomco.com> showing that welding and cutting equipment and parts were offered [Complaint Annexure 6]. On November 27, 2000, the web site shows birds and flowers and a touring site unrelated to the Respondent's business [Complaint Annexure 7]. Then on November 29, 2001, the web site displayed the words, "This is Comco world, offering wide choices and powerful support in both welding and cutting line and pressure control meter, then a second web page, <comco.com> was automatically downloaded, again offering welding, cutting equipment and parts [Complaint Annexures 8 and 9]. On December 11, 2000, the web site is directed to Comco Industries, Co. Ltd. and a list of welding equipment and parts [Complaint Annexures 10 and 11].
Complainant had sent a letter on November 22, 2000, to Respondent objecting to the use and registration of the disputed domain name, <cigweld.com> and requesting the transfer of the domain name to Complainant [Complaint Annexure 4]. In response, on November 22, 2000, Respondent informed the Complainant that the letter was referred to its board of director and its lawyer [Complaint Annexure 5]. Thereafter, Respondent made the changes to the web site mentioned above.
The Respondent filed a response on July 22, 2001, eight days after the due date. No reasons were stated for the delay.
5. Partiesí Contentions
Complainant states that it is the exclusive licensee and owner of the marks CIGWELD and CIGWELD Device which have been registered widely around the world [Complaint, ∂V (c) and Annexures 3a, 3b and 3c]. Complainant also states that it is the exclusive licensee of Commonwealth Industrial Gases, an Australian corporation founded in 1935, and that Commonwealth Industrial Gases has used the mark CIG with its gas cylinders and commenced manufacturing of welding products since 1935 [Complaint ∂V(a) and Annexure 3b].
In 1989, the mark CIGWELD was first used and registered for a variety of goods and services in the welding business [Complaint, ∂V(a)]. In 1994, the welding business was transferred to Complainant with an exclusive license to use the mark in connection with the welding business and products and services. Complainant also widely registered and used the mark in many countries, particularly countries in Asia [Complaint, ∂V(a), Annexures 3a, 3b and 3c]. The Complainant enjoyed a sales volume of Aus$120 millions worldwide in 1999/2000 financial year. Complainant also soled equipment to the value of Aus$1.45 millions in China alone [Complaint, ∂V(a)].
Complainant contends that the Respondent has no right or legitimate interest in the domain name and that Respondent has not been authorized to use the mark. Complainant also contends that the disputed domain name <cigweld.com> is confusingly similar to its mark CIGWELD. Complainant further contends that the Respondent has adopted, used and registered the domain name <cigweld.com> in bad faith as evidenced by Respondentís lack of any connection with the fanciful word "CIGWELD", the continued use of and the various changes made in the web site since receiving notice from the Complainant [Complaint, Annexures 4, 5 and 6 to 11].
Complainant requests the transfer of the disputed domain name to Complainant [Complaint ∂13].
Respondent has submitted a late response to the Complaint without any explanation for the delay. It also did not respond to the Notice that the Response was not timely submitted. Nevertheless, the Administrative Panel at its discretion decided to consider the response.
The Respondent repeatedly stated its ignorance of Complainant's rights in the trademark, CIGWELD. It contends that the mark is not known in China by providing summary statements from five individuals. It alleged that it invented the domain name and that the registration of the domain name is proof that it is available. The Respondent stated that Complainant has not provided proof of ownership and rights in the trademark CIGWELD. No evidence was submitted with the Response.
6. Discussion and Findings
A. Applicable Rules
This dispute is governed by the UDRP and the UDRP Rules.
Article 15(a) of the Rules requires the decision to be based on the statements and documents submitted in accordance with the UDRP and Rules and any rules and principles of law deemed applicable.
Under paragraph 4(a) of the UDRP, the Complainant is required to prove:
(i) the domain name is identical or confusingly similar to the Complainantís trademark or service mark;
(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.
Paragraph 4(b) of the UDRP identifies the following circumstances as evidence of registration and use of a domain name in bad faith:
(i) The respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to 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 respondents 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 respondent has engaged in a pattern of such conduct, or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor, or
(iv) by using the domain name the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondentís web site or on the on line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of the respondentís web site or location or of a product or service on the respondentís web site or location.
A comparison of the disputed domain name <cigweld.com> and Complainantís registered marks, CIGWELD or CIGWELD Device shows that the dominant part of the disputed domain name is identical to the registered trademarks. The contents of the web site of the disputed domain name shows that it offers welding equipment parts and supplies, services identical or similar to the products and services offered by the Complainant under its registered trademarks. The disputed domain name is confusingly similar to the registered marks.
The Respondent has not provided any evidence that it has a legitimate interest or right in the disputed domain name. It alleged that CIG stands for Comco Industrial Group, a Taiwanese foreign-investment corporation. However, there is no indication how Comco Industrial Group is related to Respondent. Therefore, it is a third party unrelated to the parties. Respondent cannot claim the rights of a third party in its defense. The weight of the evidence shows that Respondent has no right or legitimate interest in the domain name.
Complainant's evidence shows that the mark has been in use and registered in connection with welding equipment and supplies since 1989. The mark has been widely used and registered in many countries particularly countries in Asia since 1994. In particular, Complainant has used the mark and sold equipment into China since 1994. Under the law of China, the use of a confusingly similar domain name to the registered mark for similar or identical welding equipment and parts is regarded as an infringement of Complainant's rights in China.
Respondent's registered the domain name in 2000. Respondent pled ignorance. However, due diligence would have required Respondent to make an investigation by conducting a simple search. A search would have shown that CIGWELD is a registered mark in many countries, particularly in China. The registration for the mark in China is constructive notice and cannot be ignored. It was Respondent's negligence that led to the registration of <cigweld.com> as a domain name. This is especially true after it received notice from Complainant on November 22, 2000. The use of a registered and widely used mark was considered an infringement of the owner's rights in China. Ikea Inc. v. CINET, October 2000, (Beijing 2nd Intermediate People's Court). Ignorance is not a defense.
The Respondent attempted to show that the mark CIGWELD is not well-known in China by providing bald summary "statements" of five individuals. These are mere allegations of lack of knowledge and do not constitute legal evidence. Moreover, Complainant supplied evidence that the mark is well-known. The evidence showed that the mark is registered widely in many countries. The trademarked products enjoyed a high volume of sales of Aus$120 millions in the year 1999/2000. The sales volume in China of Aus$1.45 millions was not insubstantial. The evidence provided by the Complainant was not contested by the Respondent, even though Respondent scoffed at Aus$1.45 million sales in China. The annexures to the Complaint shows the use and registration of the mark CIGWELD by Commonwealth Industrial Gases Ltd. and Complainant since 1989, the registration in many countries in Asia and the substantial sales around the world and China. This is evidence that the mark is well-known.
Respondent stated that it does not use the word "CIGWELD" in connection with its products. It is an admission that it does not have the right to use CIGWELD as a trademark. This is evidence that Respondent is aware of the rights of the Complainant.
Respondent admits that CIGWELD is an invented word. As such, it would not be legitimately chosen unless it is seeking to create an association with the Complainant. Respondent's allegation of innocent registration of <cigweld.com> is not credible for the following reasons. CIG had been used by Complainant's licensor since 1935. The mark CIGWELD has been used and registered by Complainant in many countries since 1989. The Respondent's allegation that it does not have proof of Complainant's ownership of the trademark in China is false. The copies of the certificates of registration issued by the Australian Register of Trademarks and State Administration of Industry and Commerce are proof at least of Complainant's ownership of and rights in the mark in Australia and China. These copies of the certificates of registration were provided with the Complaint in English forwarded by Complainant by post on February 27, 2001, and again on June 25, 2001, with the Chinese Complaint. Thus, Respondent's allegation that "But even till now we don't have any offic[i]al copy from complaints' [SIC] to proof [SIC] that," is false.
Moreover, after Complainant's notification by letter of November 22, 2000, the Respondent's attempts to change the content of the web site are evidence that the registration was not in good faith. There appears to be no good reason to register <cigweld.com> as a domain name and link it to the web site <comco.com.cn> except to use the mark CIGWELD to direct the consumers to Respondent's web site for commercial gain. The Respondent has used the disputed domain name in a manner to attract commercial gain and to create a likelihood of confusion that the web site is sponsored by the Complainant or affiliated with the Complainant or endorsed by the Complainant. This is palming off on Complainant's reputation and is unlawful under the Unfair Competition Law of China and around the world. Such use of the disputed domain name is an infringement of Complainantís rights in the registered trademark. This is also evidence of bad faith.
Thus, the requirements of UDRP paragraph 4(a) and 4(b) have been met by the Complainant.
The panel has determined that the disputed domain name <cigweld.com> as registered and used is confusingly similar to the Complainantís registered trademark, CIGWELD and CIGWELD Device, that the Respondent does not have any rights or legitimate interests in the domain name, and that the Respondentís registration and use of the disputed domain name was in bad faith.
Accordingly, the disputed domain name, <cigweld.com> is required to be transferred to Complainant, Comweld Group Pty. Limited.
Maria C.H. Lin
Dated: August 31, 2001