WIPO

 

WIPO Arbitration and Mediation Center

 


ADMINISTRATIVE PANEL DECISION

CMZ Machinery Group S.A., Construcciones Mecanicas Zumarraga SA and
Jose R Zumarraga Amorrortu v. Li Qiang

Case No. D2006-0294

 


1. The Parties

The Complainants are CMZ Machinery Group S.A., Construcciones Mecanicas Zumarraga S.A., and Jose R Zumarraga Amorrortu, Zald¨ªbar Bizcaia, Spain, represented by Clarke, Modet & Co., Spain.

The Respondent is Li Qiang, Shenyang LN, China, represented by Yu Guo Fu & Li Kun, Beijing, China.

 


2. The Domain Name and Registrar

The disputed domain name <cmz.com> is registered with Bizcn.com, Inc.

 


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ¡°Center¡±) on March 8, 2006. On March 8, 2006, the Center transmitted by email to Bizcn.com, Inc. a request for registrar verification in connection with the domain name at issue. On March 29, 2006, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 31, 2006. 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 April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2006. The Response was filed with the Center on April 30, 2006.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 8, 2006. 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 Complainants in this administrative proceeding are CMZ Machinery Group S.A., Construcciones Zumarraga S.A. and Jose R. Zumarraga Amorrortu (hereinafter ¡°the Complainant¡±).

The Complainant, Jose R. Zumarraga Amorrortu is the registered owner of the trademark CMZ in Spain since April 30, 1966.

The Respondent Li Qiang initially registered the disputed domain name <cmz.com> with Dotster on January 31, 1999. The language of the registration agreement was English. However, the Respondent transferred the domain name <cmz.com> to a new registrar Bizcn.com, Inc. on March 14, 2006, six days after the Complaint was filed. The Center contacted Bizcn.com, Inc. in view of paragraph 8(b) of the Policy prohibiting registrar change during a pending administrative proceeding. However, Bizcn.com, Inc. did not allow the domain name registration to be restored back to Dotster. The language of the new registration agreement with Bizcn.com, Inc. is Chinese. Consequently, there was a change in the default language of the procedure because paragraph 11 of the Rules establishes that in the absence of an agreement between the parties the language of the proceeding shall be the language of the registration agreement. The Complaint was originally submitted in the English language and accordingly, the Center notified the Complainant of the deficiency in the Complaint on March 29, 2006. In response to the Center¡¯s notification, the Complainant submitted the Amendment Writ to the Complaint requesting English to be the language of proceedings on March 31, 2006.

 


5. Parties¡¯ Contentions

A. Complainant

The Complainant¡¯s contentions are summarized as follows:

I. The domain name at issue <cmz.com>, is identical to CMZ owned by the Complainant

CMZ is the acronym of the second Complainant, Construcciones Mec¨¢nicas Zumarraga and it is the principal and main character of the mark, which symbolizes the quality, goodwill and manufacturing principles developed for the Complainant¡¯s goods. The Complainant asserts that the Complainant¡¯s trademarks and the domain name at issue are identical. The Complainant points out that the domain name is formed by the addition of the registered trademark CMZ and the gTLD termination ¡°.com¡± which does not provide any originality to the Complainant¡¯s mark. The generic TLD ¡°.com¡± cannot be taken into consideration in the present comparison, as it has been clearly stated in The Forward Association, Inc. v. Enterprises Unlimited, NAF Case FA0008000095491. The Complainant has a long history in the machinery tools market in Europe and the mark CMZ identifies a famous brand in the area where the Complainant works. On the contrary, the mere registration of gTLDs does not establish any prior rights of the Respondent. Although he was allowed to obtain such domain name, the Respondent does not possess any trademark rights which justified such a registration. The registration of a domain name does not imply an examination of the legitimacy of the registrant.

II. Lack of legitimate interests or rights

The Complainant contends that there is no doubt about the lack of any legitimate intellectual property rights or any other rights whatsoever, on the part of the Respondent to that mark CMZ. There is no evidence that the Respondent, whose name differs from the domain name, is commonly known by the domain name. (See Marriot Int¡¯l, Inc. v. Thomas Burstein & Miller, WIPO Case No. D2000-610). The Complainant has also never authorized the Respondent to use the mark CMZ, either by granting a license or franchising the mark CMZ to the Respondent. Therefore the Respondent does not hold any right over the mark CMZ.

III. The domain name was registered and is being used in bad faith

(a) A cease and desist letter was sent to the Respondent

When the Complainant became aware of the <cmz.com> domain name, subject of this Complaint, a cease and desist letter was sent on December 30, 2005, informing the domain name holder about the legitimate rights of the Complainant to the mark CMZ. The Respondent was requested to transfer such domain name to the Complainant by virtue of the existence of exclusive trademark rights. Such letter was never answered by written or oral notice by the Respondent. Since the sending of the cease and desist letter, the Respondent did not delete the contents of the website ¡°www.cmz.com¡±. Furthermore, the cease and desist letter has been returned to the Complainant because the contact details given by the Respondent were insufficient. The Complainant asserts that this is further evidence of the Respondent¡¯s bad faith as insufficient information for the data of the owner of the domain name has been provided. Many decisions have stated that this conduct is an evidence of the bad faith of the respondent¡¯s registration. See Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024.

(b) Domain name selling request from the Respondent

(i) The domain name <cmz.com> has been offered on public sale

The domain name <cmz.com> is, at the moment, hosted in a SEDO website owned by SEDO. This company defines itself as ¡°The leading marketplace for buying and selling domain names and websites¡±. This website offers more then 3 million domain names for sale. Most of these domains refer to well-known marks and it seems, as in this case, that the only intention in registering these domains is getting a profit from the legitimate owners of the marks. The advertisement made in <cmz.com> is that the domain name is for sale and the seller¡¯s expectation is US$ 10,000. This sum clearly exceeds the out of pocket costs and evidences the speculation purposes of the Respondent. The website SEDO also includes a paragraph of ¡°Legal Issues¡± about the selling of domain names and it clearly expresses: ¡°The important thing is to know that buying and selling domain names is perfectly legal, as long as the domain being sold does not infringe on the trademark rights of a third party.¡± In spite of this warning it appears clear that the only purpose of the website is to get a profit since many of the domains for sale correspond to very famous or well-known marks. The Respondent has included the disputed domain name for sale in spite of knowing that a third party holds previous rights. Moreover the domain name is still offered for sale after the cease and desist letter and e-mail were sent to the Respondent. This conduct may only be described as bad faith of the Respondent who had clear knowledge of the Complainant¡¯s marks and even with such knowledge offered the domain<cmz.com> for sale. The legal issues in the website also inform the domain sellers that ¡°it is their responsibility to ensure that their domain name is free from possible trademark infringements before listing it for sale. Ignorance of the law is no excuse!¡± The Respondent has ignored this warning although he had an effective knowledge of the existence of a previous mark. It is the Complainant¡¯s contentions that the domain names offered on sale at the SEDO website are not done on a pure auction basis but there is a system of negotiations with the different bidders very similar to an auction. Selling domain names by auctions have been found to be evidence of bad faith in many decisions such as Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210.

(ii) The Respondent has asked for a sum of monies directly from the Complainant

The Complainant asserts that one of the Respondent¡¯s purposes for registering the domain name is to resell it to the Complainant or a third party. As a matter of fact, the Respondent clearly stated his intention to obtain a profit on behalf of the Complainant. The Complainant submitted proof that they have received an e-mail dated on November 18, 2005, from the Respondent requesting an amount of US$ 35,000 for the purchase of the domain names <cmz.com>. The language selected for giving the information about the selling purpose is Spanish and when Internet users enter the domain, the website found is in Spanish as well. The Respondent has sought to profit from the mere registration of the Complainant¡¯s trademark as a domain name. The Respondent is clearly focused on obtaining a high profit by the selling of this domain name that exceeds not only the out of pocket expenses but also the UDRP fee of US$ 1,500. The Respondent¡¯s money request was initially US$ 10,000. Moreover the money expectation shown in the website is US$ 10,000 but when the Complainant began to negotiate for the transfer of the domain name <cmz.com> the Respondent tried to get even a higher profit from that purchase. The Respondent was prepared to sell the domain name <cmz.com> to anyone, but for the owner of the trademark he raised his request to US$ 35,000. This behavior may only be considered as the bad faith of the Respondent who was aware of the interest of the Complainant.

(c) Inactivity of the domain

The Complainant contends that the Respondent will not be able to demonstrate any use of the domain name in relation to services or products, legitimate or not; prior to the complaint or not. Nor is he using the domain name in connection of any non-commercial activity. In fact, there is no use of the domain name, which forwards to a parking website handled by SEDO. The Complainant asserts that the only use the Respondent is making of <cmz.com> is preventing the Complainant from making any legitimate use of it, and trying to force the Complainant into a transfer-for-price negotiation. This is exactly the type of bad faith use the Policy was designed to prevent. Previous UDRP decisions have held that the lack of use of the domain name, or existence of a serious purpose of use, can be interpreted as indication of the Respondent¡¯s bad faith in accordance with paragraph 4(a)(iii) of the Policy. (See Banco Urquijo, S.A. v. Fernando Labad¨ªa Pardo, WIPO Case No. D2000-1502). The Panel stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 that ¡°the relative issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.¡±

(d) The transfer of the domain name to a new Registrar

The Respondent transferred the domain name <cmz.com> to a new registrar, Bizcn.com,Inc., six days after the Complaint was filed. According to paragraph 8 of the Policy, this is not allowed. The Complainant asserts that the Respondent has clearly infringed this rule of the Policy. Consequently, there is a change in the language of the procedure because paragraph 11 of the Rules establishes that in the absence of an agreement between the parties the language of the proceeding shall be the language of the registration agreement.

The Complainant has reason to believe that a case of cyberflying applies to the current case. Many decisions have stated that the transfer of a domain name once a UDRP proceeding has commenced, known as cyberflight, shall be considered as additional evidence of bad faith and a violation of the Policy and the Rules. See BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a AlexBars, WIPO Case No. D2004-0830; Merck KGaA v. Taha Chhipa, WIPO Case No. D2004-0905; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; and ABB Asea Brown Boveri Ltd v. Yvonne Bienen, Bienen Enterprises, WIPO Case No. D2002-0718.

Furthermore the transfer of a domain name after a cease and desist letter is sent is considered as behaviour in violation of the Policy and the Rules and consequently evidence of the bad faith of the Respondent. Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850.

(e) The Respondent has changed the website contents of the domain name

The Complainant submits that the Respondent, after the proceeding has commenced, has changed the contents of the disputed domain. The new content of the website with the domain name simply makes reference to a situation of passive holding under the appearance of ¡°This site is currently Under Construction. Please check back at a later time.¡± Although there is not yet an effective use of the domain name the Respondent has included references to third parties¡¯ marks such as China Mobile or the signs of the Olympic Games that will take part in China in 2008, whose owner is the International Olympic Committee. The Respondent includes as well the word ¡°partner¡± for the China Mobile Company creating a likelihood of confusion as to the source, sponsorship, affiliation, of the Respondent¡¯s domain name.

B. Respondent

The Respondent has refuted the Complainants¡¯ contentions and arguments in their entirety and his contentions are summarized as follows:

I. The Respondent has rights or legitimate interests in the disputed domain name

The Respondent makes the following contentions:

(a) The Respondent contends that the mark CMZ is a mere combination of three letters in the alphabet without any meaning or distinctiveness. Consequently, the Complainant could not prove that Internet users or consumers would associate the Complainant¡¯s goods or services with the mark CMZ. Furthermore, the Complainant could not effectively distinguish their goods or services from those of other traders who use the mark CMZ because this mark is inherently non-distinctive.

(b) The Respondent further asserts that one Ming Xing Ball Bearing Factory from Chong Qing City (ÖØÇìÊÐÃ÷öÎÖá³Ð³§) has applied for the registration of the mark CMZ on April 13, 1998 in class 7 and the Respondent has entered into an agreement with the registered trademark owner to register the domain name <cmz.com> and to construct and maintain the website for the registered trademark owner.

(c) The Respondent also asserts that he has constructed the website in accordance with the terms of the agreement with the registered trademark owner and has been using the domain name in a bona fide manner. He contends that it is common for parties to enter into agreements such as the present one (to assist in the registration, construction and maintenance of a website) in China as many trademark owners lack the necessary Internet skills and expertise.

(d) The Respondent contends that the contents of the website of the disputed domain name show that the website is constructed for the registered trademark owner Ming Xing Ball Bearing Factory from Chong Qing City and it is being used by the trademark owner legitimately in a bona fide offering of its goods and services. The Respondent asserts that this shows that Respondent is making a legitimate use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Therefore the Respondent asserts that he has legitimate interests or rights in the disputed domain name.

II. The Respondent did not register and use the disputed domain name in bad faith

The Respondent makes the following contentions:

(a) The Respondent refutes the Complainant¡¯s contentions that he has engaged in the selling of the disputed domain name over the Internet. The Respondent argues that he registered and holds the domain name for and on behalf of the registered trademark owner, Ming Xing Ball Bearing Factory from Chong Qing City in accordance with the agreement signed on November 9, 1995. The agreement expressly prohibits the selling or renting of the domain name and consequently, the Respondent could not have risked offering the domain name for sale knowing full well the possibility of being sued for breach of contract and the substantial damages payable in the event of a breach. The Respondent further asserts that the emails adduced by the Complainant alleging that the Respondent has engaged in a proposed sale of the domain name are unsigned documents and may be completely fabricated.

(b) The Respondent contends that the domain name which he has been engaged to register is completely unrelated to the Complainant or its business. The registered trademark owner Ming Xing Ball Bearing Factory from Chong Qing City is in the business of ball bearings, a business completely unrelated to the Complainant. Since the businesses of the Complainant and the Respondent are distinctly different, the website of the Respondent¡¯s domain name also serves to cater to Internet users and customers that are completely different from the potential customers of the Complainant. As such, the Respondent contends that there could not be any diversion of the Complainant¡¯s potential customers to the Respondent¡¯s website and thus there could also not be any confusion on the part of the public with regard to the use of the disputed domain name by the Respondent or his principal Ming Xing Ball Bearing Factory from Chong Qing City.


6. Discussion and Findings

6.1 Language of the Proceedings

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or if specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was submitted in the English language although the registration agreement was in Chinese and accordingly, the Center notified the Complainant of the deficiency in the Complaint on March 29, 2006. In response to the Center¡¯s notification, the Complainant has submitted the Amendment Writ to the Complaint requesting English to be the language of proceedings on March 31, 2006.

The Complainant submitted the following arguments on the issue of the language of the proceedings:

(a) In the first registration made by the Respondent, the language of the registration agreement was English and that was the reason why the Complaint was filed in that language. When the Respondent received notice about the Complaint, he transferred immediately the domain name to a new registrar Bizcn.com, Inc., even though this is not permitted by the Policy. The Complainant submits that the Respondent chose a Chinese registrar and a registration agreement in Chinese which he realized would involve a higher cost to the Complainant in view of the administrative proceeding. The Complainant claims that the Chinese language is not commonly used outside of China. It is not one of the languages generally spoken or considered official for many institutions.

(b) The new content of the website ¡°www.cmz.com¡± is mainly in English.

(c) The Complainant submits that it appears from the evidence submitted that the Respondent has sufficient knowledge of the English language (in particular from the emails exchanged between the parties).

(d) Finally, the Complainant argues that the translation of the Complaint into Chinese would cause additional costs to the Complainant.

(i) The Panel¡¯s discretion under the Policy

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 parties may 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 has the discretion to decide otherwise having regard to the circumstances of the case. The Panel¡¯s discretion must be exercised judicially 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 of the proceeding is not prejudicial to the parties in their abilities to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the attention of the Respondent.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the Respondent¡¯s website, the language of the Respondent¡¯s initial registration agreement and the Complainant¡¯s websites, the services provided in the websites etc. On record, the Respondent is Chinese and is thus not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Respondent has been notified of the Complaint and its contents and the Respondent has also filed a Response to the Complainant¡¯s contentions even though the Complaint was in English. This suggests that the Respondent is proficient in the English language and he is not disadvantaged in any way.

Pursuant to the Rules, paragraph 11, the Panel has the discretion to determine the language of the present proceeding. After considering the circumstances of the present case, the Panel decides that the proceeding should be conducted in the English language and should proceed henceforth in the English language.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced evidence to demonstrate that it is the registered owner of the trademark CMZ in Spain since 1966. The Panel accepts the evidence adduced by the Complainant and finds that the Complainant has trademark rights in the mark CMZ.

The disputed domain name comprises an exact reproduction of the three letters ¡®C¡¯, ¡®M¡¯ and ¡®Z¡¯ and in the combination and order of the Complainant¡¯s trademark CMZ.

Many UDRP decisions have held that the addition of the generic top level domain extension ¡°.com¡± does not serve to distinguish the Respondent¡¯s domain name from the Complainant¡¯s trademark because ¡°when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL nor the TLD (.com) have any source indicating significance. Those designations are merely devises that every Internet site provider must use as a part of its address.¡± See The Forward Association, Inc. v. Enterprises Unlimited, NAF Case FA 0008000095491, October 3, 2000. The addition of ¡°.com¡± to the three letters combination of CMZ does not distinguish the Respondent¡¯s domain name from the Complainant¡¯s CMZ trademark.

The Respondent contends that the mark CMZ is a mere combination of three letters in the alphabet without any meaning or distinctiveness and therefore the Complainant could not effectively distinguish their goods or services from those the other traders with the use of the mark CMZ as this mark is inherently non-distinctive. The Panel is of the view that although it is true that in most cases single letters, numerals, and other grammatical or punctuation signs will be treated as signs that lack a distinctive character and such reasoning may be extended to combinations of letters and numbers, abbreviations, or initials. However, many such marks have successfully obtained registration on the strength of factual distinctiveness through extensive periods of use. It is pertinent to note that in the present case, the Complainant has indeed obtained registration of the mark CMZ since 1966 in Spain and has been using this mark in relation to a whole range of goods.

The Panel notes that valid trademark registrations have been considered to suffice to demonstrate a complainant¡¯s ¡°rights¡± to a trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (available at ¡°http://www.wipo.int/amc/en/domains/search/overview)¡±.

The Panel finds for the Complainant on the first element of the test.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, it is open for a respondent to establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

¡°(i) before any notice to you [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 [Respondent] (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 [Respondent] 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 contends that he has rights or legitimate interests in the disputed domain name and his arguments are set forth in the foregoing paragraphs.

After a careful examination of the Respondent¡¯s arguments and the documents adduced before the Panel, the Panel rejects the Respondent¡¯s arguments and finds that he has no rights or legitimate interests in the disputed domain name. The Panel¡¯s reasons are as follows:

The Respondent asserts that the mark CMZ has been registered in the People¡¯s Republic of China by a party named Ming Xing Ball Bearing Factory from Chong Qing City and that the Respondent is the authorised user of this mark via an agreement executed and signed on November 9, 1995. The Respondent submits that under this agreement, he has agreed to register the disputed domain name and also to construct and maintain the website for this party, Ming Xing Ball Bearing Factory. The Respondent further asserts that the contents of the website show that the website is constructed to further the legitimate commercial purposes of Ming Xing Ball Bearing Factory. It is important to note that the trademark registration document adduced by the Respondent categorically states that the document is not the official document of the Trademark Registry of the People¡¯s Republic of China and cannot be admitted as evidence in law. The Panel has also undertaken an independent search and examination of the website ¡°www.cmz.com¡±. It is a simply constructed website and the Chinese title of this website is ¡°ÖйúÖá³ÐÍø¡± which means ¡°China Ball Bearing Website¡±. In the ¡°About Us¡± page, it is stated that the ¡°China Ball Bearing Website¡± is a professional website constructed and launched by the China Bearing Industry Association and is at present the only website within China that is constructed and launched by the Association through funds raised voluntarily. The Panel does not understand how a website that is meant to be constructed for a ball bearing factory in Chong Qing would have an Introduction Page that features the China Bearing Industry Association. Ming Xing Ball Bearing Factory is not featured in anywhere in this website. This appears highly irregular and inconsistent with the assertions of the Respondent that he has been authorised to construct the website for the benefit of Ming Xing Ball Bearing Factory. A quick browse of the website also reveals that there is only one software product on sale; two partners; and the rest of the pages in the website are empty. This certainly cannot be a website that has been constructed and used since 1995 as asserted and allegedly evidenced by the agreement signed between the Respondent and Ming Xing Ball Bearing Factory. It is also important to note that the contact address of Ming Xing Ball Bearing Factory could not be found on any of the documents adduced by the Respondent. The Panel has also conducted a search on the Internet and has found that the official website of the China Bearing Industry Association is at ¡°www.cbia.com.cn.¡± This further proves that false representations have been made by the Respondent on this website. After considering all the circumstances and the documents, the Panel concludes that the website and the agreement are just an attempt on the part of the Respondent to show that he has rights or legitimate interests for the purposes of this proceeding when in fact he has none.

Consequently, the Panel rejects the Respondent¡¯s contentions and accepts the Complainants contentions. The Panel thus finds for the Complainant in the second element of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or 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 Respondent¡¯s documented out of pocket costs directly related to the domain name; or

(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website or other on-line location, by creating a likelihood of confusion with the Complainant¡¯s mark as to the source, sponsorship, affiliation, or endorsement of Respondent¡¯s website or location or of a product.

The above instances of bad faith are illustrative only and they are not exhaustive. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028. The Panel concludes based on the case file and upon the evidence of the circumstances surrounding this case that the Respondent has registered and used the disputed domain name in bad faith.

The Panel¡¯s reasons are as follows:

For a finding that the Respondent has registered and used the disputed domain name in bad faith, an important question is whether the Respondent knew or should have known about the Complainant¡¯s trademark rights when registering the disputed domain name.

In cases involving domain names incorporating generic terms or acronyms, the Panel notes that previous administrative panels were more prepared to find that the respondent either has a legitimate interest in respect of the domain name, or that the respondent has acted in good faith in registering and using the domain name. In fact, a number of panels have found for the respondents in cases involving generic terms or acronyms. See Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc., WIPO Case No. D2001-0085; EAuto, L.L.C. v. Net Me Up, WIPO Case No. D2000-0104; Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573; and Builder¡¯s Best, Inc. v. Yoshiki Okada, WIPO Case No. D2004-0748. Specifically, in Builder¡¯s Best, Inc. v. Yoshiki Okada, the Panel has opined that in order to find bad faith in a situation where it was alleged that ¡°the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct (Paragraph 4(b)(ii) of the Policy), there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant¡¯s mark, not just ¡®someone¡¯s¡¯ mark.¡±

Some administrative panels have discussed to what extent certain types of respondents can close their eyes to the possibility of third-party trademark rights and still maintain that the registration and use of the disputed domain name is not in bad faith. On this question, the panel discussion in Mobile Communication Service Inc. v. WebReg, Rn, WIPO Case No. D2005-1304 is instructive. The disputed domain name in Mobile Communication Service was not an abbreviation but a generic term. The Panel in Mobile Communication Service made a distinction between a respondent who has registered a domain name consisting of a dictionary term because the respondent in good faith believed that the domain name¡¯s value derived from its generic qualities, in which case the Respondent may have a legitimate interest and an offer to sell the domain name may not necessarily be a sign of bad faith, and the other situation in which a respondent registers large numbers of domain names for resale often through automated programs with no attention as to whether they are identical or similar to trademarks, in which case such a conduct would be indicative of bad faith.

Returning to the facts and evidence of the present case, the following factors lead the Panel to conclude that the Respondent ¡°knew¡± or ¡°ought to have known¡± of the Complainant¡¯s trademark rights:

(a) Although the Complainant¡¯s mark is an acronym or an abbreviation, it has been registered and used as a trademark since 1966. There is substantial goodwill and reputation attached to the mark particularly in the specialized field of machinery. The fact that the Complainant does not have trademark rights in China is not conclusive as the Policy does not require that the Complainant establish that it has trademark rights in the jurisdiction of the Respondent. The Complainant submitted evidence that it attends to international events within the industry. Based on the record, the Panel finds on the balance, that the Respondent most likely knew of the Complainant and its trademark when it registered the disputed domain name.

(b) This is corroborated by the fact that the Respondent has put the disputed domain name up for sale on the Internet. The evidence adduced indicates a classic case of cybersquatting in which the Respondent registers the trademark of another, hoping to profit from the registered trademark owner¡¯s desire to reflect its trademark in a corresponding domain name.

(c) There is no evidence that the Respondent is genuine in using the disputed domain name in a bona fide offering of goods or services on the Internet.

The Panel finds that the Respondent¡¯s conduct subsequent to the registration of the disputed domain name is indicative that the registration and use of the domain name is in bad faith.

The Respondent has transferred the domain name to a Registrar in which the registration agreement is Chinese shortly after the administrative proceedings had begun. The domain name had remained with the Registrar Dotster for many years since December 1995 and the Respondent seemed content with the arrangement. If there had been genuine reasons for the transfer, the Panel is of the view that the Respondent would not have waited for such long time before requesting for the transfer. Other reasons must have prompted the Respondent to transfer the domain name to the new Registrar. Although the Respondent has argued that he requested the transfer before the receipt of the Complaint and the commencement of these proceedings, the Panel notes that the Respondent knew of the dispute as the Complainant had sent him a cease and desist letter. This sudden transfer of the domain name by the Respondent coupled with the timing of the transfer leads the Panel to conclude that the Respondent¡¯s conduct is indicative of bad faith.

The contents of the Respondent¡¯s website have been changed at least two times since the commencement of the proceedings. At first, there was no use of the domain name <cmz.com> which forwarded to a parking website handled by SEDO. After the proceeding commenced, the Respondent changed the contents of the disputed domain name. The new content of the website simply makes reference to a situation of passive holding under the appearance of ¡°This site is currently Under Construction. Please check back at a later time¡±. In the website, the Respondent has included references to third parties¡¯ marks such as China Mobile or the signs of the Olympic Games that will take part in China in 2008, whose owner is the International Olympic Committee. When the Response was filed, the evidence adduced by the Respondent is a website with completely different contents ¨C a professional website of the China Bearing Industry Association. The changes undertaken by the Respondent in his website are inconsistent with his assertions that he has been engaged by a party named Ming Xing Ball Bearing Factory since 1995 to construct and maintain the website. The Respondent has not been truthful in his representations and such conduct is indicative of bad faith.

The Complainant has adduced email and other evidence to show that the Respondent has engaged in the selling of the disputed domain name on the SEDO website and that there is an offer to sell the domain names for US$ 35,000. The Respondent argues that such documents may be fabricated as they are not signed. The Panel has found many inconsistencies in the Respondent¡¯s submissions and documents and finds the Respondent¡¯s allegations implausible. The Panel accepts the evidence of the Complainant and finds, on a balance of probabilities, that the Respondent has registered the domain name hoping to profit from the trademark owner¡¯s desire to reflect its trademark in a corresponding domain name.

The Panel finds for the Complainant in the third element of the test.

 


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 name, <cmz.com>, be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: July 3, 2006