WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Giga-Byte Technology Co. Ltd v. ST OKLIYS

Case No. D2007-0159

 


1. The Parties

The Complainant is Giga-Byte Technology Co. Ltd, Taiwan, Province of China, represented by Legal & IPR Department at Giga-Byte Technology Co. Ltd.

The Respondent is ST OKLIYS, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <οƼ.com> is registered with eNom.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the Center) on February 6, 2007. On February 8, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On February 8, 2007, eNom 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. On February 15, 2007, 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 February 15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondents default on March 8, 2007.


The Center appointed Susanna H.S. Leong as the sole panelist in this matter on March 26, 2007. 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 was established in 1986 in Taiwan and it is in the business of manufacturing IT products such as motherboards, graphic cards and other computer hardware. In recent years, the Complainant has expanded its business to include LCD devices, notebooks, power supply and mobile phones.

The Chinese name of the Complainant is οƼɷ޹˾. In the Chinese language community, the Complainant is known as οƼ and Ρ. The Complainant has registered numerous subsidiaries all over the world including Ningbo Giga-Byte Technology Ltd (οƼ޹˾) and Dongguan Giga-Byte Electronic Ltd (ݸε޹˾). The Complainant has about 4,500 employees in China and about 1,800 employees worldwide.

The Complainant also owns several registered Chinese character trademarks οƼ and οƼGIGA-BYTE TECHNOLOGY in Taiwan, Province of China, and Hong Kong, SAR of China. The trademarks οƼ and οƼGIGA-BYTE TECHNOLOGY have been used in Taiwan since the Complainant was founded in 1986. The οƼ trademark was registered in Taiwan in 2002 and in Hong Kong in 2003 whilst the οƼGIGA-BYTE TECHNOLOGY trademark was registered in Taiwan in 2002.

The supporting material provided also indicates that the trademark οƼGIGA-BYTE TECHNOLOGY has been used in prominent ways on the Complainants IT products in China since 1996 including packaging; magazines, newspapers and web banners advertisements; trade fairs and IT promotional events; online tournaments; billboards and light boards; Internet IT product reviews; and resellers and distributors.

The Complainant has registered more than 140 domain names in the world including <οƼ.cn>; <οƼ.й>, <οƼ.>; <οƼ.˾>; <οƼ.tw>; <οƼ.cc>; <.cc> and internet keywords such as Ρ; οƼ; 塱 and Կ. The aforementioned domain names and Internet keywords are connected to the websites www.gigabyte.com.cn or www.gigabyte.com.tw.

 

5. Parties Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that based on the evidence adduced before the Panel, the Complainant has rights or legitimate interests, whether registered and unregistered rights, in the trademarks οƼ and οƼGIGA-BYTE TECHNOLOGY and that these trademarks are both well-known in the Chinese language community.

The Complainant contends that the disputed domain name <οƼ.com> except for the generic top-level domain designation .com is identical to the Complainants trademark οƼ. The οƼGIGA-BYTE TECHNOLOGY trademark consists of two parts: οƼ and GIGA-BYTE TECHNOLOGY. The Complainant contends that TECHNOLOGY is the translation of Ƽ while Ρ is not the translation of GIGA-BYTE TECHNOLOGY but is the commonly accepted transliteration of the Complainants company name GIGA-BYTE in China. This fact is supported by the fact that numerous websites refer to the Complainant as Ρ or οƼ. The Complainant contends that the Chinese characters οƼ are the dominant part of the Complainants οƼGIGA-BYTE TECHNOLOGY trademark. The four Chinese characters οƼ in the disputed domain name are identical to the dominant part of the Complainants οƼGIGA-BYTE TECHNOLOGY trademark and the Complainant contends that this is the portion which will attract consumers attention. The Complainant contends that neither the suffix .com nor the English words GIGA-BYTE TECHNOLOGY could distinguish the domain name <οƼ.com> from the Complainants trademarks. Thus, the domain name <οƼ.com> is confusingly similar to the trademark οƼGIGA-BYTE TECHNOLOGY.

Rights or Legitimate Interests

The Complainant contends that οƼ is not a generic term in the Chinese language. The Complainants adoption, application and registration of the trademarks οƼ and οƼGIGA-BYTE TECHNOLOGY precede the Respondents registration of the disputed domain name on April 20, 2006.

The Complainant contends that no other person or legal entity had registered or used the trademarks or similar trademarks in the form of οƼ and οƼGIGA-BYTE TECHNOLOGY in the Chinese language countries or regions including China, Taiwan, Hong Kong SAR of China, Macau SAR of China, Singapore and Malaysia. The Complainant contends that the Respondent owns no rights in οƼ, whether registered or unregistered rights.

The Complainant has not authorized the Respondent to use the οƼ name nor to include that mark in any domain name. The disputed domain name is now linked to a third party website www.baidu.com offering information search services which are completely unrelated to the disputed domain name. The Complainant contends that neither the Respondent nor Baidu has any business relationship with the Complainant. Consequently, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the Respondent is ambiguously identified in the WHOIS record as IDN ST OKLIYS and the few months which the Respondent has linked its domain name to the Baidu website could not make the Respondent commonly known by the disputed domain name nor is there any reason to believe that the Respondent has been commonly known by the disputed domain name.

The Complainant contends that the Respondent by linking the disputed domain name to the Baidu website has prejudiced the interest of the Complainants famous trademarks and has diverted the public from the Complainants websites to Baidus website, driving large volume of Internet traffic as a result of the Complainants famous trademarks οƼ. Such use of the disputed domain name is not consistent with a bona fide offering of goods or services within the meaning of the Policy.

Therefore, the Complainant contends that the Respondent has no rights or any legitimate interest in respect of the domain name <οƼ.com>.

Registered and Used in Bad Faith

The Complainant contends that the disputed domain name was registered and used in bad faith under paragraph 4(a)(iii) and (iv) of the Policy based on the following reasons:

(a) The Respondent has taken steps to conceal its true identity and has intentionally provided false contact information in breach of its registration agreement;


(b) The Complainants trademarks have a strong reputation and are widely known, as evidenced by their substantial use. Thus, it is indisputable that the Respondent had knowledge of the Complainant and its famous trademarks prior to the registration of the disputed domain name.


(c) The Respondents name is ST Okliys which in the Complainants opinion has nothing to do with οƼ and the Respondent could choose any domain name related to its name which would not impinge on the trademark rights of the well-known marks οƼ and οƼGIGA-BYTE TECHNOLOGY. The only conceivable reason for the Respondents choice is that the Respondent consciously wants to take advantage of the fame of the Complainants well- known trademarks by creating a likelihood of confusion, diverting Internet users to the Respondents website or a third-partys website.


(d) The Respondent by using the domain name has intentionally attempted to attract for commercial gain, Internet users to a third party Baidus website by creating a likelihood of confusion with the Complainants trademarks as to the source, sponsorship, affiliation or endorsement of the third party Baidus website.

B. Respondent

The Respondent did not reply to the Complainants contentions.

 

6. Discussion and Findings

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 substantial evidence to demonstrate that it has registered trademark rights in the οƼ and οƼ GIGA-BYTE TECHNOLOGY marks in Taiwan and Hong Kong. The Panel notes also the supporting material provided by the Complainant indicating extensive usage of the οƼ and οƼ GIGA-BYTE TECHNOLOGY marks by the Complainant in prominent ways on the Complainants IT products in China since at least 1996 including packaging; magazines, newspapers and web banners advertisements; trade fairs and IT promotional events; online tournaments; billboards and light boards; Internet IT product reviews; resellers and distributors. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trademarks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co Ltd v. Steven S Lalwani WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. v. Greg Ricks, NAF Case No. 93633; and Passion Group Inc. v. Usearch Inc. AF-0250. The Panel finds that the Complainant has succeeded in establishing rights in the οƼ and οƼ GIGA-BYTE TECHNOLOGY marks for the purpose of the first element of the Policy.

The Panel also notes that amongst the predominantly Chinese speaking communities in countries and regions such as China, Hong Kong, Taiwan, Macau, Singapore and Malaysia, οƼ is apparently used as a transliteration of the Complainants company name GIGA-BYTE TECHNOLOGY LTD with Ρ being the transliteration of GIGA and Ƽ referring to TECHNOLOGY. Even if one accepts that Ρ may suggest a meaning of excellent or good skills and in this regard, is descriptive of the word Ƽ or TECHNOLOGY, the Panel is of the view that through extensive and substantial use of these marks οƼ and οƼ GIGA-BYTE TECHNOLOGY by the Complainant in the predominantly Chinese speaking countries and regions, these marks οƼ and οƼ GIGA-BYTE TECHNOLOGY have since acquired a secondary meaning denoting origins of goods or services from the Complainant.

In assessing whether there is identity or confusing similarity between the Complainants trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements.

The disputed domain name comprises (a) an exact reproduction of the Complainants trademark οƼ and the Chinese portion of οƼ GIGA-BYTE TECHNOLOGY mark and (b) the suffix .com. The Chinese characters οƼ is the dominant and the distinctive element of the Complainants mark and it has been reproduced in its entirety in the disputed domain name. The Panel finds that the four Chinese characters οƼ portion is the most prominent part of the disputed domain names which will attract consumers attention. The Panel finds that the suffix .com denotes that this domain name is in the generic top level domain and it is well-established that the addition of such a suffix to a trademark may be disregarded for the purpose of assessing identity or confusing similarity under the Policy.

For the above mentioned reasons, the Panel therefore finds that the disputed domain name <οƼ.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

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

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word οƼ in the domain name;


2. There is no evidence on the record to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademarks or to apply for or use any domain name incorporating the trademarks;


3. There is no indication on the record that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;


4. The Complainant and its οƼ and οƼ GIGA-BYTE TECHNOLOGY marks enjoy a considerable reputation with regard to IT products and computer hardware. Consequently, in the absence of contrary evidence from the Respondent, the οƼ and οƼ GIGA-BYTE TECHNOLOGY marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may 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 Panel notes that the Respondent did not respond to the Complainants Complaint and has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

The Panel finds for the Complainant on the second part 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 the domain name in bad faith, namely:

(i) circumstances indicating that the 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 the complainant, for valuable consideration in excess of the Respondents documented out-of-pocket costs directly related to the domain name; or

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

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

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

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, the Panel finds that the Complainant and its marks οƼ and οƼ GIGA-BYTE TECHNOLOGY enjoy a considerable reputation with regard to IT products and computer hardware in the predominantly Chinese speaking countries and regions such as China, Hong Kong, Taiwan, Macau, Singapore and Malaysia. This is evidenced by the extensive and substantial use of these marks on the Complainants products. The Complainant also has a substantial presence in the Internet as it has registered and used more than 140 domain names in the world including <οƼ.cn>; <οƼ.й>, <οƼ.>; <οƼ.˾>; <οƼ.tw>; <οƼ.cc>; <.cc> and internet keywords such as Ρ; οƼ; 塱 and Կ. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainants trademark rights at the time of the registration of the domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of an association with the Complainant and its IT products and computer hardware.

The Complainant has also adduced evidence to support that by using confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents website which is currently linked to a third party Baidus website. Given the considerable reputation of the Complainants οƼ and οƼ GIGA-BYTE TECHNOLOGY marks, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainants famous marks, intended to ride on the goodwill of the Complainants marks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainants οƼ and οƼ GIGA-BYTE TECHNOLOGY trademarks and this constitutes a misrepresentation to the public that his website is in one way or the other associated or connected with the Complainants. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.

The Panel accepts the Complainants submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain name in bad faith.

 

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, <οƼ.com> be transferred to the Complainant.


Susanna H.S. Leong
Sole Panelist

Dated: April 9, 2007