WIPO

 

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 <κ.com> (Chinese traditional characters for <Golden Harvest.com>) (RACE Language Encoding:  bq 3blas6n6.com) and <κ.com> (Chinese simplified characters for <Golden Harvest.com>) (RACE Language Encoding:  bq 3blas6n6.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 Respondents 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 κ (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 κ (Chinese equivalent for Golden Harvest) in respect of different classes of goods and services in different countries.  In China, the Complainants mark κ 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 κ (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 κ (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 κ and a company set up by Mr. Chow Ting Hsing Raymond who is a shareholder and director of the Complainants. 

The mark κ (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 κ 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 <κ̊ʘF.˾>, <κ̇H.˾>, <κЇ.˾>, <κ.˾> and <κӰ.˾> 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 κ was conspicuously displayed at the beginning of the film and was extensively publicised was a film called ŭ (The Angry River).  The film was produced in 1970 and was released in May 1971.

As a result of continuous use of the mark κ (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 κ̡ 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 Respondents registration certificates for the contested domain names show that one of the contested domain names, <κ.com> (Chinese traditional character domain name) was registered on October 29, 2001, subsequent to the date of first contact.  The Complainants submitted that the Respondents 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 Respondents 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 Respondents 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 Respondents 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 Complainants 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 <κ.com> (Chinese traditional characters) and <κ.com> (Chinese simplified characters), except for the generic top-level domain designation .com, are identical with the Complainants registered mark κ.

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 Respondents 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 Respondents 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 respondents documented out-of-pocket costs directly related to the domain name.

The Panel finds that the Respondents 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 <κ.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 <κ.com> (Chinese simplified characters) on November 10, 2000;  and, after contacting and negotiating with the Complainants, registered the domain name <κ.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 Respondents 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, <κ.com> (Chinese simplified characters) and <κ.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 κ̡ in the disputed domain name belongs to the latter.  The simplified form of κ̡ is identical with its traditional form, and the RACE Language Encoding for the two forms of κ̡ is the same, i.e. <bq3blas6n6.com>.  Although the Respondent was able to register the two disputed domain names in two forms of κ, they are actually the same characters to the Chinese language users.