WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ciba Specialty Chemicals Holding, Inc. v. Germciba.com
Case No. D2003-0717
1. The Parties
The Complainant is Ciba Specialty Chemicals Holding, Inc., Switzerland, represented by IP Mirror GmbH, Germany.
The Respondent is Germciba.com, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <germciba.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2003. On September 12, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On September 16, 2003, Network Solutions, Inc. Registrar 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 September 19, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 14, 2003.
The Center appointed Luca Barbero as the sole panelist in this matter on November 4, 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.
4. Factual Background
The Complaint is based on a number of registrations for the trademark "CIBA" i.e. the International Registration No. 683787 of June 24, 1997, designating China and a number of other countries.
The Respondent registered the domain name <germciba.com> on January 10, 2003.
5. Partiesí Contentions
The Complainant indicates that the trademark "CIBA" has been registered by the predecessors of Ciba Specialty Chemicals Holding, Inc., in Switzerland for over 100 years and is registered in numerous jurisdictions worldwide. The trademark "CIBA" is synonymous with specialty chemicals in spanning across 17 different industries from agriculture to personal care.
The Complainant informs the Panel that even though the trademark was first registered and used more than 100 years ago, it was newly registered in the year 1997 in the name of Ciba Specialty Chemicals Holding, Inc. on a global basis. The Swiss Registration of June 24, 1997, covers the classes 1, 2, 3, 4, 5, 9, 16, 17, 18, 22, 24, 25, 35, 36, 37, 38, 39, 40, 41, 42 and the corresponding International Registration according to Madrid Agreement and Madrid Protocol dates from December 31, 1997, and covers the same classes of goods/services in 45 countries, including China.
The Companyís net sales exceed 7 billion of Swiss Francs per year.
The Complainant contends that the domain name in question is confusingly similar to the "CIBA" trademark registered by the Complainant, to which it has rights as the dominant four letters, "CIBA", being an exact match to the Complainantís mark only enhances the fact of a confusingly similar relationship between the Complainantís mark and the domain name in question, quoting a number of cases supporting such an interpretation.
Furthermore, the Complainant argues that the addition of the word "germ" does not make <germciba.com> dissimilar to "CIBA", it is in fact "extremely similar" and the inclusion of the prefix "germ" does not alter the confusion caused to the denomination "CIBA" in any way as the descriptive elements added to the domain names do not simply fail to avoid a likelihood of confusion.
According to the Complainant, the Respondent has no rights or legitimate interests to the domain name since even if prima facie the Respondent has assumingly registered <germciba.com> to reflect the name under which it conducts its business and that is "GermCiba (Wenzhou) Sales Co. Ltd." the contact telephone numbers set out on the Respondentís homepage are not those belonging to a commercial entity but to a private household.
The Complainant has therefore conducted a search in Germany and China to determine if the Respondent has an affiliation to a "germciba" entity as it is stated on the corresponding website ,"GermCiba is from Germany". The company name searches conducted by the Complainant revealed that the Respondent has no affiliation whatsoever with any entity nor is there any entity registered in Germany or China as "GermCiba".
The Complainant submitted to the Panel a copy of the search conducted in Germany for the corporate denomination "germciba", as well as a copy of a statement from the Chinese business authority that the Respondent has not had a business entity registered incorporating the denomination "germciba", which thus results in the Respondent misrepresenting its rights in every possible way. The Complainant has also conducted a trademark search in China as well as internationally, for the denomination "germciba" and it has been discovered that the Respondent does not have a trademark registration nor application for "germciba" in China nor at an international level.
According to the Complainant, the Respondent is clearly misleading the public when on the website the sign "TM" is closely placed to the denomination "GermCiba", thus provoking the false impression that it owns this trademark or at least has filed such a trademark application.
The Complainant goes further to assert that the Respondent is not making a legitimate noncommercial use of the domain name since it seems like it conducts business via the domain name, misrepresenting itself to be an affiliate to a German company and, neither is it making fair use of the domain name as it uses the domain name with an obvious intent for commercial gain by misleadingly diverting consumers or by tarnishing the trademark or service mark at issue.
The Complainant indicates that it has not licensed or otherwise permitted the Respondent to register the domain name incorporating the trademark "CIBA" and points out to the Panel that to date, neither through its headquarters nor through any other of its affiliate companies, especially not through its subsidiary in China, has provided any express authorization to the Respondent to utilize any of its intellectual property rights, since no relationship currently exists between the two parties.
The Complainant also argues that the Respondent is clearly attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service.
The Complainant attaches to the Complaint a copy of the subsidiaryís cease and desist letter (including an English translation) sent to the Respondent to which the Respondent has not responded.
According to the Complainant, the Respondentís indifference to the contents of the letter leads to an assumption of a bad-faith registration as well as no legitimate interest, since no explanation was provided for the issue at hand. Furthermore, the fame, distinctiveness, strength, and priority of use of the Complainantís mark, coupled with the domain name being confusingly similar to the Complainantís mark and the Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy, lead the Complainant to conclude that the Respondent has no rights or legitimate interests in the domain name in dispute.
With reference to the registration in bad faith the Complainant argues that the Respondent is clearly attempting to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of the website or of a product or service the said website.
The Complainantís mark is such a well-known mark in the field of goods/services the Respondent allegedly conducts. In addition, the Respondent has no links with Germany nor China, even via its commercial activities, thus enhancing the bad faith element through misrepresentation of any trademark or commercial right to the "germciba" denomination.
The Complainant states that there was no apparent reason for the Respondent to have chosen the contested domain name other than to profit by its fame and by the traffic generated by the likely initial expectation of users that it is a name associated with the Complainant and its services. The Complainant is of the opinion that the word "germciba" is not a word traders would legitimately choose unless seeking to create an impression of an association with the Complainant.
The Complainant asserts that the Respondent is demonstrably familiar with the Complainantís marks and therefore it is inevitable to infer that the Respondent registered the disputed domain name with the intention to use it for commercial gain by attracting Internet users to its own website by creating confusion as to the Complainantís sponsorship of or affiliation with those sales.
The Complainant highlights that the Respondent did have on the website corresponding to the disputed domain name, the Complainantís logo, which was removed upon receipt of the cease and desist letter from the Complainant. The Complainant attaches to the Complaint a copy of website pages from the corresponding domain name, which clearly display the Respondentís conduction of business in the same field of goods/services as the Complainant.
According to the Complainant this is an attempt to appropriate the goodwill of the Complainant as the Respondent does not own the trademark for "germciba" or is in any way affiliated with the Complainant, nor does it even have a German entity to which it is affiliated. The Complainant has provided the Panel with a copy of the status report from the domain name Registry in Germany, stating that the domain name <germciba.de> is available for registration, which confuses the Complainant as to why the Respondent had not registered a German equivalent of the domain name in dispute.
The Complainant additionally asserts that the Respondent would have registered the domain name even if he had conducted a proper trademark search or a domain name search before registering it. The Respondent definitely knew of the existence of the trademark prior to the registration of the domain name, as the trademark "CIBA" is a well-known mark at an international level as well. However, the Respondent had removed this link upon receipt of the cease and desist letter.
According to the Complainant the popularity of the Complainantís mark permits the conclusion that the Respondent knew or should have known of the Complainantís well-known mark prior to registering the disputed domain name. In addition, it could safely be assumed that the Respondent was well aware of the confusion and the deception it would cause to Internet users, particularly having no affiliations in any way or rights to the mark, thus its intention to use the Complainantís trademark.
The Respondent has not contested the allegations of the Complainant and is in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
6.1. Domain name identical or confusingly similar
The Complainant has provided evidence of ownership of several trademark registrations in different classes for CIBA, including the International Registration n. 683787 of June 24, 1997, designating China and a number of other countries. The Complainant is also the owner of the Community Trademark No. 499400 of February 15, 1999.
The Panel finds that the simple addition of a generic or descriptive term to a well known registered trademark cannot be relied upon to differentiate the sign if the domain name contains the Complainantís mark in its entirety.
In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademark of the Complainant according Paragraph 4(a)(i) of the Policy.
6.2. Rights and legitimate interest
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with Paragraph 4(c) of the Policy that:
(a) He has made 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 prior to the dispute; or
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights or legitimate interests in the domain name.
The Complainant has proved that there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainantís trademark and name under any circumstance.
The Complainant has also shown that the Respondent has not made 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 prior to the dispute since it was even adopting the Complainantís logo without authorization on the corresponding web site, which was deleted only after receiving a cease and desist letter.
As the Panel stated in Browns Canyon Corporation, Management Recruiters International, Inc. v. Ron Hana (WIPO Case No. D2003-0492) "the use of somebody elseís trademark as a domain name (or even as a meta-tag) clearly does not constitute a bona fide offering of goods or services when the website owner has no registered or common law rights to the mark, since the only reason to use the trademark as a domain name or meta-tag is to attract customers who were not looking for site in question, but were instead looking for the products or services associated with the trademark. Such use of a trademark can create customer confusion or dilution of the mark, which is precisely what trademark laws are meant to prevent. And actions that creates, or tends to create, violations of the law can hardly be considered to be bona fide".
Furthermore, the Respondent did not provide the Panel with any elements to come to a decision that the Respondent intended to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark herein nor that the Respondent is commonly known by the domain name.
In the case of Pavillion Agency Inc. v. Greenhouse Agency Ltd. (WIPO Case No. D2000-1221), the Panel affirmed that "Respondentís failure to respond can be construed as an admission that they have no legitimate interest in the domain name."
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the domain name, according to Paragraph 4(a)(ii) of the Policy.
6.3. Registration and Use in Bad Faith
For the purpose of Paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that the holder has registered or 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 holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holderís website or location.
The Panel finds paragraph 4(a)(iv) of the Policy applicable in this case since the Complainant has demonstrated that the Respondent by using the domain name has intentionally attempted to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the holderís website or location.
As held in the case of U-Haul International, Inc. v. Affordable Web Productions (WIPO Case No. D2003-0511), "the Respondentís unauthorized use of UHAUL in its domain names and particularly on its "www.uhaulmovingtruck.com" web site is a prima facie infringement of the Complainantís well-known registered trademarks. In the absence of any plausible denial from the Respondent, there can be no reasonable doubt that the Respondent knew about the Complainantís long-established U-HAUL trademark when it registered the domains and set up its original web site content. Indeed, it is difficult to imagine that any person purporting to offer knowledgeable advice about moving services in the United States would not have been aware of the Complainantís mark. The Panel infers that the infringement was made with full knowledge and intent."
The Panel finds that the domain name <germciba.com> is not a sign that traders would legitimately choose unless seeking to create an impression of an association with the Complainant. See along these lines Cyro Industries v. Contemporary Design (WIPO Case No. D2000-0336); PrintForBusiness B.V. v. LBS Horticulture (WIPO Case No. D2001-1182); La Francaise Des Jeux v. Visotex S.A. (WIPO Case No. D2000-0924); Arthur Guinness Son & Co. v. (Dublin) Limited v. Feeney OíDonnell and John OíDonnell (WIPO Case No. D2000-1710); Koninlijke Philips Electronics N.V. v. Elight Co. (WIPO Case No.D2001-1291); GmbH & Co. K.G. v. Mads Kragh (WIPO Case No. D2001-0373).
As stated i.e. in Chanel, Inc. v. IGGI Networks, Inc., (WIPO Case No. D2000-1831) "By knowingly choosing a domain name consisting of Complainantís CHANEL mark, Respondent intentionally created a situation at odds with the legal rights and obligations of the parties. The conduct of Respondent in registering <chanelmail.com>, is indicative that Respondent registered <chanelmail.com> in bad faith".
In light of the content of the web page published by the Respondent on the web site corresponding to <germiciba.com> including the use of the logo of the Complainant, the Panel concludes that the Respondent was certainly aware of the existence of the trademarks of the Complainant. Moreover, in light of the fact that the Complainantís trademark is well-known, it could be inferred that the Respondentís awareness was present also at the time of registration of the domain name.
It was held inter alia in Automobiles PEUGEOT SA v. GOOD DOMAINS, Formerly DOMAINS FOR SALE INC (WIPO Case No. D2002-0805) that "the Respondent was or should have been aware of Complainantís rights in the trademark and of the corresponding site www.peugeot.com at the time of registration of "wwwpeugeot.com" and in the case Samsonite Corp. v. Colony Holding, (NAF Case No. FA 94313) it was pointed out that "evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration". The Panel therefore concludes that given this awareness, it is evident that the registration and use of the domain name was in bad faith, as held in Cellular One Group v. Paul Bryan, (WIPO Case No. D2000-0028).
The Panel also notes that the Respondent has failed to respond to the Complaint at issue or to deny any of its allegations and has therefore not provided any evidence of nor alleged any actual or contemplated good faith use of the domain name.
Furthermore, it should be considered that any subsequent use by the Respondent of the contested domain name would necessarily create a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of a Respondent's web site in the sense of Paragraph 4(b)(iv) of the Policy (see e.g. Banca Sella S.p.A. v. Mr. Paolo Parente, (WIPO Case No. D2000-1157); Veuve Clicquot Ponsardin v. The Polygenix Group Co., (WIPO Case No. D2000-0163).
In view of the above, the Panel finds that the Respondent registered and used the domain name in bad faith, according to Paragraph 4(a)(iii) of the ICANN Policy.
In light of the foregoing, the Panel determines that the domain name registered by the Respondent is confusingly similar to the Complainant's trademark, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and used in bad faith.
Accordingly, the Panel decides that the registration of the domain name <germciba.com> be transferred to the Complainant.
Dated: November 24, 2003