WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kui Man Yeung & Kui Shum Yeung v. Tommy Cheung

Case No. D2002-0724

 

1. The Parties

The Complainants are Kui Man Yeung ("K M Yeung") of Camellia House, Mauldeth Road, Heaton Moor, Stockport, SK4 3QU, United Kingdom, and Kui Shum Yeung ("K S Yeung") of 2 Blossoms Lane, Woodford, Stockport, SK7 1RE, United Kingdom.

The Respondent is Tommy Cheung, Yang Sing, Flat F, 4F, Block 8, Charming Garden, 16 Hoi Ting Road, Mangkok, Kowloon, Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The domain name in issue is <yangsing.com> (hereafter the "domain name").

The domain name was registered with CSL Computer Service Langenbach GmbH dba Joker.com, Rathausufer 16, 40213 Düsseldorf, Germany.

The domain name was registered on or about December 31, 1998.

 

3. Procedural History

(1) The Complaint in this case was filed in email form on August 1, 2002, and in hardcopy on August 2, 2002. A Response was filed in email form on August 21, 2002, and in hardcopy on August 26, 2002.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, Paragraph 2(a);

- A Response to the Complaint was appropriately filed;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) The language of the proceedings is English.

 

4. Factual Background

A. The Complainants and their Mark

The Complainants are the proprietors of the company that operates the "Yang Sing" Chinese restaurant in Manchester, England under a trade mark licence in respect of the Yang Sing trademarks granted by the Complainants. The Yang Sing restaurant has developed considerable goodwill and reputation. The Yang Sing brand has been licensed by the Complainants to three associated ventures which has led to Yang Sing branded food being successfully made available to the mass dining and fast food markets in the North West of England. The Cathay Dim Sum by Yang Sing is a bar and restaurant in the Trafford Centre, Manchester, the Orient Xpressions by Yang Sing is a fast food kiosk also in the Trafford Centre, Manchester and Yang Sing Dash is a fast food kiosk at Manchester Airport.

The Complainants are the registered proprietors of the following United Kingdom registered trademarks:

Number

Mark

Date

Class

Goods/Services

1327430

Yang Sing

18.11.87

29

Meat; fish; poultry and game (none being live); fruits and vegetables, all being preserved, dried or cooked; pickles; preserves; prepared meals; all included in Class 29 and all prepared to a Chinese style.

2158445

Yang Sing

17.02.98

30

Sauces; condiments, spices, mustard; flour and preparations made from cereals, bread, pastry and confectionery; tea, rice, tapioca, sago, honey, treacle; all for use in Chinese style cuisine or Chinese style food products.

1327431

Yang Sing

18.11.87

42

Restaurant and catering services; all included in Class 42.

1496039

Yang Sing

02.04.92

42

Hotel services; reservation of hotel accommodation; all included in Class 42.

The trademarks consist of a transliteration of the Chinese characters meaning "Town of Goats".

B. The Respondent

The Respondent is an individual registrant.

C. The Use of the Domain Name

The domain name was not used in connection with an active website until some time in 2002. A search carried out on June 22, 1999, revealed that the domain name led to a website stated to be "under construction". A search carried out on January 21, 2002, showed no website linked to the domain name. As at the time of filing of the Complaint, the domain name resolved to a site hosted by the address "http://pages.eidosnet.co.uk/fakers" which appears in the box at the top of the screen. Eidosnet is a free internet access provider based in the United Kingdom. When the home page is printed, the address "www.yummyyummy.com/gzentertain/03version/2menu-topic/01xiao-daoyou/01yangchengguji/mail.htm" appears at the bottom of the page. The webpage contains information about the city of Guangzhou (the Mandarin name for Canton) in southern China.

Outside of the web, the domain name correctly resolves for email transport, and the Respondent uses the address "tom@yangsing.com".

 

5. Partiesí Contentions

A. The Complainantsí Assertions

The Complainants assert that the Respondentís domain name is identical or confusingly similar to the Complainantsí mark.

The Complainants assert that the Respondent has no legitimate interest or rights in the domain name. Specifically, the Complainants assert:

(1) The Respondent has used the domain name to point to a page of the <yummyyummy.com> website in order to try to create the impression that he is making legitimate use of the domain name. However, the circumstances indicate that this is not a bona fide or legitimate use. In particular, the fact that the domain name is not used as the websiteís address, merely to point to certain pages of a website which was created in July 2001, indicates that this is not legitimate or bona fide use.

The Complainants assert that the Respondent registered the domain name and is using it in bad faith. Specifically, the Complainants assert:

(1) The domain name was registered for the purpose of preventing the Complainants, as the holders of the corresponding trademark from doing so.

(2) The Respondentís failure to respond to any of the Complainantsí and their solicitorsí correspondence indicates that the Respondent is not prepared to transfer the domain name to the Complainants. The Respondent, despite having registered the domain name on December 31, 1998, has not at any time made any legitimate use of the domain name.

(3) The Respondent has registered the domain name primarily for the purpose of transferring the domain name to the Complainants who are the owners of the corresponding trademarks for valuable consideration in excess of his out of pocket costs. In a number of meetings the Respondent requesting large amounts to transfer the domain name to the Complainants.

Accordingly, the Complainants submit that the Panel should order that the domain name be transferred to the Complainant.

B. The Respondentís Assertions

The Respondent makes no assertions that his domain name is not identical or confusingly similar to the Complainantsí mark.

The Respondent asserts that he has a legitimate interest or rights in the domain name. Specifically, the Respondent asserts:

(1) The word Yang Sing means " the city of goats" in Chinese, which is the nickname of Guangzhou city, the capital of Guangdong province (Canton, China). The city got its nickname because it has a very large statue of five goats in the city center as its landmark. It is a normal word in Chineseóif you ask any Chinese person what "yang sing" is, you will receive the answer "Guangzhou". Not many will tell you that it means a restaurant in Manchester.

(2) There are actually several other Chinese businesses not related to Mr. Yeung in the United Kingdom and elsewhere called Yang Sing.

(3) If you type "yangsing" in Chinese characters into any search engine, you will find hundreds of websites with the same name, mostly of businesses in Guangzhou.

The Respondent asserts that he did not register the domain name or use it in bad faith. Specifically, the Respondent asserts:

(1) He is using the name for email purposes, although at the moment it is just linked to another site (this site does not contain anything to do with food and catering). He is hoping to start a web page in the future introducing Guangzhou and friend-finding services once he receives the resources to do so.

(2) It was not the Respondentís intention to register the name to try and make a profit by selling it. As evidence of this, he asserts that if this were his intention he would have done so already, as he has met the Mr. K. M. Yeung (the firstnamed Complainant) a couple of times while visiting Manchester. The Complainant approached the Respondent and made an offer of US$1,500 to transfer the name. The Respondent did not want to embarrass him by refusing, so he indicated that he would think about it.

Accordingly, the Respondent submits that the Panel should order that the domain name remain with him.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies to domain name registrations made in the <.com> namespace. Paragraph 4.a. of the Policy requires the Complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:

1. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

2. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

3. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

A. The Complainant has Rights in a Trade or Service Mark, with which Respondentís Domain Name is Identical or Confusingly Similar

There are two requirements that a Complainant must establish under this Paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainants provided the registration documents for its "YANG SING" mark registered in the United Kingdom in a number of classes in respect of a number of different types of products. I conclude that the Complainants, as registered proprietors of those marks, have established rights in a trademark, sufficient for the purposes of Paragraph 4.a.(i).

The second requirement is that the domain name be identical or confusingly similar to the mark. The domain name is identical to the Complainantsí mark, with the exception of the absence of any space and the inclusion of <.com> to the domain name. As has been found in many other cases these features are not relevant to an assessment of identity or similarity. I conclude that the domain name is, for the purposes of the Policy, identical to the Complainantsí trademark.

The Complainants have shown that they have rights in a trademark, and that the domain name is identical to this mark. I conclude therefore that the Complainants have satisfied the requirements of Paragraph 4.a.(i) of the Policy.

B. The Respondent has No Rights or Legitimate Interest in Respect of the Domain Name

The Complainants assert that the Respondent has no rights or legitimate interest in the domain name, as required under Paragraph 4.a.(ii) of the Policy. Their pleading here is very confusing, but seems to indicate that the redirection of a domain name to another site does not of itself establish a bona fide business use of the Respondent. Against this the Respondent suggests that the name is Chinese (by which I take him to mean Cantonese) for "City of Goats," the nickname of Guangzhou. This is consistent with the Complaint. Moreover the Respondent suggests that there are many other businesses, both in the physical worlds and online, which use the name "Yang Sing".

The Complainantsí assertions go to Paragraph 4.c. of the Policy, which provides examples of situations sufficient to establish a legitimate interest:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Respondent has not, by any stretch of the imagination, satisfied any of these requirements. Clearly Paragraph 4.c.(i) does not apply, since there is no evidence of demonstrable preparations to use the domain name in connection with any bona fide offering of goods or services. And the other parts of Paragraph 4.c. do not obviously apply here.

This is not the end of the matter, however, since Paragraph 4.c. is only intended to present exemplars of the requirements of Paragraph 4.a.(ii). The question still remains whether the Respondent has established rights or a legitimate interest in the domain name, as required under Paragraph 4.a.(ii). This is a more difficult question than it first looks. At first blush it would seem that the Respondent has no legitimate interest in the nickname of a city, as opposed, say, to his own nickname. It is almost as if one were claiming a legitimate interest in my nickname, which of course is nonsensical. However, upon reflection it seems to me that common nicknames of cities or other geographical region are much like generic words. No-one "owns" them, not even community groups of those regions. If we conclude (as I and many others have in previous decisions) that anyone may have a legitimate interest in a generic word, then it seems to me that there is no reason for suggesting that the Respondent should not have every right to register <yangsing.com>. Perhaps I might have a different view of the matter if the Complainant in this case were the City of Guangzhou. But the Complainants seem to be in exactly the same position as the Respondent, in that they are also trading on the recognition of the well-known nickname for the city. Under these circumstances I believe that the Respondent has a perfectly legitimate interest in the name.

I conclude that the Complainant has not satisfied the requirements of Paragraph 4.a.(ii) of the Policy. Since the requirements of paragraph 4.a. are conjunctive, there is no purpose in examining the elements of bad faith required by Paragraph 4.a.(iii). I doubt that I would have concluded that there had been bad faith in this case, but it is not necessary for me to make any decision on this point. The Complainant has not made out its case on Paragraph 4.a.(ii) and therefore fails in total.

 

7. Decision

The Complainant has not made out all of the elements of Paragraph 4.a. of the Policy.

Pursuant to Paragraph 4.i. of the Policy and Paragraph 15 of the Rules for the Policy, the requested remedy is denied.

I hereby order that the domain name <yangsing.com> remain with the Respondent.

 


 

Dan Hunter
Sole Panelist

Dated: September 20, 2002