WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Data Group, Inc. v. Lingjun

Case No. D2004-0398

 

1. The Parties

The Complainant is International Data Group, Inc. of Framingham, Massachusetts, United States of America, represented by Venable, LLP of Washington DC, United States of America.

The Respondent is Lingjun of Chengdu, Sichuan, Peopleís Republic of China

 

2. The Domain Names and Registrar

The disputed domain names <pcworlddownload.com> and <pcworlddownload.net> are registered with Bizcn.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 29, 2004. On June 1, 2004, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain names at issue. On June 10, 2004, Bizcn.com, 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 June 18, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on July 21, 2004.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on July 21, 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.

 

4. Factual Background

The Complainant, International Data Group, Inc., is a leading provider of print and online publications, as well as conferences and information about computers and information technology. The Complainant publishes more than 300 magazines and newspapers including Bio-IT World, CIO, CSO, Computerworld, GamePro, InfoWorld, Network World and PC World. The Complainant produces PC WORLD, a publication on computers that is circulated in 65 countries, including the Peopleís Republic of China. PC WORLD is also prominent online and PC WORLD is registered as a domain name in over twenty ccTLDís. These ccTLD domain names resolve to countryĖspecific websites featuring the local edition of PC WORLD. The Complainant owns more than 180 trademark registrations worldwide for marks consisting of, or containing as the dominant feature, PC WORLD.

 

5. Partiesí Contentions

A. Complainant

i. Identical or Confusingly Similar

The Complainant contends that it has rights in the mark PC WORLD and that the disputed domain names are confusingly similar to the Complainantís trademark. In the present case, the Complainant argues that (a) the addition of a generic term to a well-known mark is confusingly similar to that mark; (b) where the mark concerned is also well-known, the likelihood of confusion is enhanced and in this case, the Complainant contends that actual confusion has occurred; and (c) the disputed domain names are being used for services similar to the Complainantís with an intention to confuse consumers.

With regard to (a), the Complainant argues that there is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The second level of the disputed domain names are combinations of the PC WORLD mark and the generic term "download." The addition of a generic term such as "download" to a mark, in particular a well known mark, is considered "confusingly similar" and the Complainant cites numerous UDRP cases in support of this contention.

With regard to (b), the Complainant contends that the PC WORLD mark is a famous mark as it has been in continuous use since 1983. Consequently, consumers are likely to believe that any domain name incorporating the PC WORLD mark is associated with the Complainant. It is the Complainantís argument that the Respondentís domain names are likely to confuse customers and cause them to believe mistakenly that a domain name using PC WORLD in connection with a website that discusses computer software, and uses the Complainantís trademarks is associated with the Complainant. The Complainant further adduces evidence in the form of an e-mail to show that the Respondentís website has already caused actual confusion as the e-mail shows that a consumer is mistakenly contacting the Complainant to complain about a problem that he had when downloading contents from the Respondentís website.

With regard to (c), the Complainant points out that the Respondent is using the disputed domain names for websites that offer similar content to that provided under the Complainantís trademark PC WORLD such as discussions of, and downloads of, the same kinds of software and related products that are reviewed and discussed in the Complainantís PC WORLD publications.

ii. Rights or Legitimate Interests

The Complainant contends that to the best of his knowledge, the Respondent has no rights to any trademark consisting of the term "PC WORLD" in any country and is using the disputed domain names with the intent, for commercial gain, to misleadingly divert Complainantís consumers to its websites or to disrupt Complainantís business.

iii. Registered and Used in Bad Faith

The Complainant contends that the disputed domain names are registered in bad faith and are being used in bad faith. The Complainant contends that the Respondent has registered the disputed domain names in bad faith because the Respondent had constructive notice of the Complainantís trademark rights by virtue of (a) the Complainantís trademark registrations in the United States, the Peopleís Republic of China, and in many other countries; and (b) the Complainantís use of its trademark in print advertising and on its websites, as well as use of the mark in the United States, the Peopleís Republic of China and other countries. The Complainant further contends that the Respondent, being a national and resident of the Peopleís Republic of China, would have had actual notice of the Complainantís rights because of the widespread circulation of PC WORLD in that country.

The Complainant argues that the disputed domain names resolve to an English-language website offering reviews of products related to computers and the opportunity to download various types of software. It is the Complainantís contention that given the nature of the Complainantís PC WORLD magazine and companion online publications, it is logical for consumers to assume that a site called PCWORLDDOWNLOAD is sponsored by PC WORLD as a place to obtain products related to those reviewed in the publications. In this way, the domain names are used solely to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainantís registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondentís websites. The Complainant argues that by doing so, the Respondent has misappropriated the reputation and commercial value of the PC WORLD trademark with a bad-faith intent to profit. Consequently, the Complainant contends that the Respondentís conduct is clear evidence of bad faith as set forth in the UDRP at Paragraphs 4(b)(iii) and 4(b)(iv).

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Language of the Proceedings

The Complaint was filed in the English language. On June 11, 2004, the Center sent a notification to the Complainant concerning the Language of Proceeding. Pursuant to Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Center has been informed by the registrar concerned that the language of the registration agreement for the disputed domain names is Chinese. Accordingly, the Center requested the Complainant to provide the Center with satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English. If the Complainant could not do so, then the Center would request that the Complaint be translated into Chinese and then submitted to the Center.

In response to the Centerís notification, the Complainant has, through its legal representative, Ms. Janet F. Satterthwaite, filed two Supplemental Arguments Regarding Language of Proceedings in accordance with the Policy on June 14, 2004, and on June 16, 2004. The Complainant submits that according to Rules, Paragraph 11, there is an important proviso that gives the Panel the authority "to determine otherwise, having regard to the circumstances of the administrative proceeding." As such, the Complainant contends that it is entitled to submit legal arguments for the Panel to decide on the language of the proceedings. The Complainant proceeded to cite a number of UDRP decisions in which a Panel has allowed proceedings to be conducted in a language other than the language of the registration Agreement if the circumstances showed that the Respondent was capable of responding to the Complainantís language: Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989; Biogen Idec MA Inc. v. Seong Choi, WIPO Case No. D2003-0961; and Volvo Trademark Holding AB v. Enterprises ReVolvo, WIPO Case No. D2004-0086. The Complainant argues that, in the present case, the Respondent is also using English for its websites and it is obvious that the Respondent is perfectly capable of communicating in English. The Respondentís website offers discussions of, and downloads of, the same kinds of software and related products that are reviewed and discussed in the Complainantís PC WORLD publications. Everything on the website is in English. On the other hand, the Complainant argues that being a corporation located in Massachusetts, United States of America, it is not in a position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of not only the Complaint, but also all of the Annexes. Consequently, the Complainant argues that the balance of hardship lies clearly in its favour.

Paragraph 11 of the Rules provides:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."

Thus, the general rule is that the parties are at liberty to agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel reserves the right to decide otherwise having regard to the circumstances of the case. The Panelís discretion must be exercised in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding must not be prejudicial to either of the parties in his or her abilities to articulate the arguments for the case.

In this particular case, the contents of the website that bears the disputed domain names are all in English. It is a reasonable assumption to make that the Respondent is sufficiently well-versed in the language in order to conduct his business over the website in English. If he is not, there were ample opportunities for the Respondent to raise his objections on the choice of language, but he has made no response whether on the issue of the language of the proceeding or the allegations contained in the Complaint lodged by the Complainant. To rule that the language of the proceeding is Chinese would cause substantial delay in the proceedings and result in the Complainant incurring unnecessary costs. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides that in accordance to Paragraph 11 of the Rules, English shall be the language of the present administrative proceeding.

B. Substantive Elements of the Policy

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

Having reviewed the documents adduced by the Complainant, the Panel is satisfied that the Complainant has established its rights in the trademark PC WORLD and that the disputed domain names <pcworlddownload.com> and <pcworlddownload.net> are confusingly similar to the Complainantís trademark. As mentioned above, the Complainant owns numerous trademark registrations in several countries for its PC WORLD mark and this mark has also been registered as domain names in twenty ccTLDs.

The disputed domain names are made up of the Complainantís mark and the generic word "download." The Panel finds that the addition of the word "download" to the Complainantís mark PC WORLD does not serve to distinguish the Respondentís domain names from the Complainantís mark. Instead, the Panel accepts the Complainantís submissions that in the present case, the addition of the generic word "download" to its widely known mark PC WORLD is likely to confuse customers and cause them to believe mistakenly that a domain name using PC WORLD in connection with a website that discusses computer software, and uses the Complainantís trademarks is associated with the Complainant.

C. Rights or Legitimate Interests

According to Paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain names. On the issue of burden of proof, a number of WIPO decisions have held that "once a Complainant establishes a prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing." See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 and International Hospitality Management - IHM S.p.A v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683.

The Complainant asserts that to the best of its knowledge, the Respondent has no rights to any trademark consisting of the term "PC WORLD" in any country and is using the domain names with the intent, for commercial gain, to misleadingly divert Complainantís consumers to its websites or to disrupt Complainantís business. The Panel is of the view that the Complainant has established a prima facie case and it is for the Respondent to rebut the allegations. Unfortunately, the Respondent has not submitted a Response and consequently, the Respondent has failed to invoke any of the circumstances that could have demonstrated any rights or legitimate interests in the domain names under Paragraph 4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the domain names pursuant to Paragraph 4(b) of the Policy.

D. Registered and Used in Bad Faith

On the evidence adduced before the Panel, the Panel finds that the Complainantís trademark PC WORLD is very well known in many countries including the Peopleís Republic of China wherein the Respondent resides. Therefore, the Panel accepts the Complainantís submission that the Respondent had actual or constructive notice of the Complainantís trademark rights at the time of the registration of the domain names or thereafter.

It is important to note that the disputed domain names <pcworlddownload.com> and <pcworlddownload.net> resolve to the Respondentís website which is in English and it offers reviews of products relating to computers and provides the opportunity to download various types of software. This, coupled with the fame of the Complainantís mark PC WORLD, may cause Internet users to assume that the Respondentís site called PCWORLDDOWNLOAD is sponsored by or in some way affiliated with the Complainant. The Panel reasonably finds that the Respondent is, in using the disputed domain names, seeking to exploit the goodwill in the Complainantís mark PC WORLD to attract Internet users intentionally to the Respondentís website for purposes of commercial gain. This constitutes bad faith use and registration under Paragraph 4(b)(iv) of the Policy.

In the light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

 

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, <pcworlddownload.com> and <pcworlddownload.net> be transferred to the Complainant.

 


 

Susanna H.S. Leong
Sole Panelist

Dated: August 4, 2004