WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha ASTY and Kabushiki Kaisha F.D.C. PRODUCTS v. LiHai
Case No. D2003-0963
1. The Parties
The Complainants are Kabushiki Kaisha ASTY, Hiroshima, Japan ("ASTY") and Kabushiki Kaisha F.D.C. PRODUCTS, Tokyo, Japan ("FDC"), represented by Saegusa International Patent Office, Japan.
The Respondent is LiHai, Luohu District, Shenzhen City, the People’s Republic of China, represented by GuoYu Yu (Jade Yu) and Tong Gao Li, Shenzhen City, Guang Dong, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <4-degree.com> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 5, 2003. That day the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On December 8, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on December 11, 2003. The Center verified that the Complaint together with the amendment to 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 December 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2004. The Response was filed with the Center on January 5, 2004.
The Center appointed Alan L. Limbury as the sole panelist in this matter on January 14, 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.
On January 27, 2004, pursuant to Rule 10(c), the due date for the Panel’s decision was extended by the Panel from January 28, 2004 until February 4, 2004.
The language of the proceeding was English, being the language of the registration agreement.
4. Factual Background (undisputed facts)
FDC owns and operates or franchises numerous retail stores in Japan, Hong Kong, Taiwan and France. Jewelry made of silver and/or platinum is FDC’s main item. Other items include clothing and other fashion items. It has been doing business under the trademark "4ºC" since 1972. In 1986, FDC became a subsidiary of ASTY, which has been the registered proprietor in Japan of the trademark "4ºC" since 1989 (No. 2189076), which it has licensed FDC to use in that country and elsewhere.
FTC has been the registered proprietor in Hong Kong since 1999 (No.B00096) of the trademark "4ºC".
In December 2001, ASTY lodged separate applications to register the mark "4ºC" in China in respect of eight classes of goods including one application in relation to various items of jewelry in International Class 14 (Application No. 3035482). Five of those applications remain pending, including No. 3035482. In April 2003, three of those applications matured into registrations for 10 years. None of those registrations covers jewelry.
Both of the Complainants own other trademark registrations and have other applications pending in other countries for the mark "4ºC", covering jewelry and other products among their specification of goods.
FDC’s printed company profile (distributed and publicized shortly after February 28, 2002) and its website at "www.fdcp.co.jp" explain the derivation of the trademark "4ºC" and FDC’s business concept as follows:
"Water freely and wildly changes its form upon necessity. Sometimes, it becomes snowy ice crystal radiating fine light beams, and sometimes it becomes high tidal wave rolling out to the ocean. We, F.D.C. PRODUCTS, have strong relationship with such water. 4ºC is the underwater temperature of a lake, etc. where it is covered with ice. It is a "sanctuary" for fishes, which indicates tranquility and comfort at such severe environment. Since the establishment of the brand "4ºC " (yon-do-c in Japanese, meaning 4 degree centigrade) in 1972, we have been freely and dynamically expanding business and continuing to propose something new and comfortable without being biased by existing values.
That symbolizes "water" itself. Water is not at all mediocre; it is certainly extraordinary. Its molecular structure is simple but extremely powerful as it freely changes to gas, liquid and solid body. It has strong unity to scrape the rigid stone and land.
There was same amount of water 4.6 billion years ago as there is now which continues to circulate. We hope our business activities will bring tranquility and comfort just like the great circulation of water does to all living creatures on this Earth".
The disputed domain name <4-degree.com> was registered by the Respondent on February 18, 2003, for one year. The Respondent’s website at "www.4-degree.com" displays the mark 4°-C on the top left portion of every page. The remainder of the text is in the Chinese language. Under the heading "Brand Introduction" is the following (in translation), which appeared between July 23, 2003 and September 10, 2003:
"Water changes its form freely. Sometimes it is like a snow crystal with radiant sparkles and at other times a powerful wave in the vast ocean. "Water" is simple but extremely powerful. It is not at all mediocre; it is certainly extraordinary. It has strong unity to scrape the rigid stone and land, and brings tranquility and comfort to all living creatures on this Earth. To symbolize "water" itself - this is our most important idea. "4ºC" is the underwater temperature of a lake, etc. where it is covered with ice. It is a "sanctuary" for fishes, which indicates tranquility and comfort at such severe environment."
The Respondent uses the website to recruit prospective franchisees to sell silver jewelry in China under the trademark "4ºC". The website also contains the following statements (in translation): "We are devoted to building the first brand in the domestic silver jewelry market" and "For these two years, with the landing of an overseas well-known silver jewelry brand, silver jewelry has begun to show signs of trend amongst domestic consumers…A strong domestic silver jewelry brand is now urgently needed….4ºC will, by its novel design, fine craft, and unique style, rapidly occupy the market and win multitudinous consumers’ favor".
5. Parties’ Contentions
The trademark "4ºC" is an arbitrary mark and not descriptive of FDC’s products, namely jewelry, clothing, bags, and other products. Consequently, it is a strong mark. It has become famous, as a result of its long and extensive use, advertising and promotion by FDC, being regularly ranked with such world-famous brands as "Tiffany" "Cartier" and "BVLGARI".
The disputed domain name is nearly identical or confusingly similar in sound, meaning, connotation, and overall commercial impression to the trademark "4ºC" in which the Complainants have rights. "4-degree" is the close equivalent of "4ºC". Although the correct English transliteration of the word "4ºC" is "4 degree centigrade" or "4 degree Celsius", it is often transliterated simply as "4 degree", because "degree centigrade" or "degree Celsius" is too long to write or pronounce. In Hong Kong, for example, the Complainants’ trademark "4ºC" is pronounced merely as [sei dou] in Cantonese, which means "four degree". In general, "centigrade" or "Celsius" tends to be omitted in the context of temperature. Therefore, the omission of the temperature scale "centigrade" or "Celsius" is not important in comparing the Complainants’ trademark "4ºC" and the disputed domain name.
For technical reasons " º " cannot be used in the disputed domain name: see Kelemata S.p.A. v. Mr. Hugo Bazzo, WIPO Case No. D2003-0594, in which the domain name <kelemata.com> was held to be identical to the trademark KELÉMATA and that for technical reasons it is necessary to omit the acute accent in a domain name.
Furthermore, it is evident that the Respondent intends to mean "4ºC" by "4-degree" because it posts the mark "4 °C" on the top left corner of every page of its website, the place that attracts attention of Internet users.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no relationship with or permission from the Complainants to use the trademark "4ºC". At the time of registration of the domain name, the Complainants’ trademark "4ºC" was well known in Japan, other Southeast Asian countries and European countries.
The Respondent’s use of the disputed domain name is in bad faith, with intent for commercial gain misleadingly to divert consumers or to tarnish the Complainants’ famous mark.
According to the Respondent’s website, the Respondent entered the Chinese jewelry market at the beginning of 2003. By then, the Complainants’ trademark "4ºC" had become famous for jewelry, clothing and bags in Japan, other Southeast Asian countries, and European countries. Accordingly, the Respondent must have registered and commenced use of the disputed domain name in bad faith, after knowing the Complainants’ famous trademark "4ºC".
Further, since both business concepts are identical, it is very likely that the Respondent consciously imitated FDC’s business concept.
The Respondent is using the disputed domain name in bad faith with the intent of attracting, for commercial gain, Internet users, namely prospective franchisees, to his commercial website or other on-line location, by creating a likelihood of confusion between the Complainants’ famous trademark "4ºC" and the disputed domain name at source, sponsorship, or affiliation. Such activities will certainly disrupt the Complainants’ business activities. Consequently, the Repondent’s registration and use of the disputed domain name are in clear bad faith.
The Respondent Lihai has worked together for many years with a colleague, Xuchanghui, in manufacturing and selling jewelry. They developed the trademark "4ºC" for their silver jewelry years ago.
They applied for registration of the trademark in China under Xuchanghui’s name in 2002, and started to set up exclusive shops all over China in January 2003. In order to promote the retail business, Xuchanghui authorised Lihai to register the disputed domain name. They started up a website using the disputed domain name and started to promote their silver jewelry products under the "4ºC" trademark.
The domain name is not identical or confusingly similar to a trademark in which either Complainant has rights. The Respondent is using the domain name <4-degree.com>. The trademark in which the Complainants claim to have rights is "4ºC". The domain name is composed of an Arabic numeral "4", a symbol "-", and the English word "degree". The trademark is composed of an Arabic numeral "4", a symbol " º ". Although the symbol " º "can be expressed as "degree", it is not the only way. The more precise way of expressing it is degree centigrade or degree Celsius. Not only are the meanings of the domain name and the trademark different, but also the appearance of two sets of words and symbols is obviously different. Therefore they are not confusingly similar to each other, not to mention identical.
The Respondent has rights in the same trademark as that claimed by the Complainants and has used it legally for many years in good faith. The Respondent was authorised by Xuchanghui, who registered the trademark "4ºC" in China on September 11, 2002. The Trademark Office accepted the application and the status is pending.
They started their own monopolization of the mark by licensing Shantou Longhu District Chuangji Trade Limited Company to use the trademark. The monopolization has so far reached more than 20 cities of China’s main province. All the shops sell silver jewelry bearing the trademark "4ºC" exclusively. And the trading network of this product has expanded all over China. The "4ºC" trademark is visible in every shop and is used in product packaging and promotion. It is already well known to Chinese consumers that "4ºC" represents silver jewelry produced in Guangdong.
On the other hand, the Complainants own no rights in the trademark "4ºC" in the same category in China. As stated in the Complaint, their application to register the trademark "4ºC" [in relation to jewelry] is still pending. The Respondent’s information is that the application has been denied and the Complainants cannot use the mark in China. Their product has never entered the Chinese market and is not known in the Chinese market as the [Complainants’] product.
The Respondent is using the domain name in good faith. Since the purpose of applying for the domain name was to promote the Respondent and Xuchanghui’s products with the "4ºC" trademark, after successfully applying for the domain name, the Respondent built and maintains an active website. Respondent has never had the purpose of disrupting the business of the Complainants, or creating any likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on his website or location.
Therefore, the Respondent believes the registration and the usage of the disputed domain name are based on the Respondent’s "4ºC" trademark. The purpose of the registration of the domain name was to sell silver jewelry products under the "4ºC" trademark legally. The Respondent has not in any way violated the Complainants’ rights. The Complainants have no factual or legal grounds.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable. It is not within the scope of the Panel’s authority to make a determination as to whether the Respondent’s activities in selling silver jewelry in China under the "4ºC" trademark are lawful. The Panel must decide solely whether the Complainants are entitled, under the Policy, to the transfer or cancellation of the disputed domain name.
Under paragraph 4(a) of the Policy, a Complainant bears the burden of showing:
- that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used by the Respondent in bad faith.
A. Rights in a trademark
This threshold element does not require a Complainant to show that it has trademark rights in the Respondent’s country nor that its trademark rights are in respect of the particular goods or services of the Respondent. It is sufficient that a Complainant establish that, at the time of filing the Complaint, it has some rights in a trademark anywhere in the world. These include rights flowing from registration, rights flowing from use having led to distinctiveness or rights as licensee: Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668.
Whether a Complainant’s trademark rights are such as to lead to the transfer or cancellation of a disputed domain name is to be determined upon a consideration of the other elements specified in paragraph 4(a) of the Policy.
In this case, ASTY has three registrations in China for the trademark "4ºC" and each of the Complainants is the registered proprietor of that trademark in other countries.
The Complainants have established this threshold element.
B. Identical or Confusingly Similar
Many cases have established that "essential" or "virtual" identity is sufficient for the purposes of the Policy: see, for example, The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113.
Likewise, many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases: see, for example BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480.
Visually, the trademark "4ºC" is neither identical nor confusingly similar to the disputed domain name <4-degree.com>. However, the Panel finds that the disputed domain name is confusingly similar both phonetically and conceptually to the trademark "4ºC" in which the Complainants have rights. See, for a somewhat similar case, L’TUR Tourismus AG v. Juergen Frey, WIPO Case No. D2003-0665.
The Complainants have established this element of their case.
C. Rights or Legitimate Interests
The Respondent has not disputed the Complainants’ assertion that, prior to the registration of the disputed domain name, the mark "4ºC" had become famous in Japan, other Southeast Asian countries and European countries. The Complainants have not authorized the Respondent to use their mark nor to register the disputed domain name.
These circumstances are sufficient to constitute a prima facie showing by the Complainants of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, (WIPO Case No. D2000-0624) and the cases there cited.
The Respondent is not known by the disputed domain name and is not making noncommercial use of it. The Respondent has sought to establish that before notice to him of this dispute, he has used the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent has produced no evidence to support his claim to have developed the trademark "4ºC" in relation to silver jewelry ‘years ago’ with a colleague, Xuchanghui.
The Panel is prepared to accept that the Respondent is a colleague of Xuchanghui, who applied in China to register the trademark "4ºC" in relation to jewelry in September 2002. That application remains pending and has not yet proceeded to registration.
However, by September 2002, the Complainants’ mark was already famous in Southeast Asian and European countries and the Respondent has not disputed the Complainants’ assertion that he registered and commenced use of the disputed domain name after knowing of the Complainants’ famous trademark "4ºC".
Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services: Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847. The Respondent’s prior knowledge of the Complainants’ famous mark and the content of the Respondent’s website lead the Panel to conclude that the Respondent is seeking intentionally to trade on the fame of the Complainants’ mark.
The Respondent has not demonstrated rights or legitimate interests in the disputed domain name and, accordingly, the Complainants have established this element of their case.
D. Registered and Used in Bad Faith
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Case No. FA94956, a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot, NAF Case No. FA94737; Canada Inc. v. Sandro Ursino, eResolution Case No. AF-0211 and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, NAF Case No. FA95037.
The material on the Respondent’s website referring to "the landing of an overseas well-known silver jewelry brand", displaying the mark "4°C" and clearly plagiarizing FDC’s business concept compel the conclusion that the Respondent set out to appropriate to himself the business concept of the Complainants in relation to their silver jewelry for use in connection with his own silver jewelry and that this strategy included the registration of the disputed domain name.
These findings satisfy the Panel that the Respondent registered and is using the disputed domain name in bad faith.
Whatever may be the state of knowledge of the Complainants’ mark in China amongst consumers generally, the Respondent’s undisputed prior knowledge of the fame of the Complainants’ mark in Japan, other Southeast Asian countries, and European countries and the content of his website also lead inescapably to the conclusion that, by using the disputed domain name to link to a website that is accessible worldwide, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the affiliation of his website and of the silver jewelry on his website. This is evidence of both bad faith registration and bad faith use.
The Complainants have established this element of their case.
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 name <4-degree.com> be transferred to the Complainants.
Alan L. Limbury
Dated: February 1, 2004