WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PCHOME ONLINE Inc. v. Pchomes
Case No. DCC2006-0002
1. The Parties
The Complainant is PCHOME ONLINE Inc., Taipei, Taiwan, People’s Republic of China, represented by Baker & McKenzie, People’s Republic of China.
The Respondent is Pchomes, Shenzhen, Guangdong, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <pchomes.cc> is registered with WebNIC.cc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2006. On July 5, 2006, the Center transmitted by email to WebNIC.cc a request for registrar verification in connection with the domain name at issue. On July 6, 2006, WebNIC.cc 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 July 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 28, 2006.
The Center appointed Hong Xue as the sole panelist in this matter on August 16, 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.
The language of the proceeding is English, being the language of the Domain Name Registration and Service Agreement, pursuant to paragraph 11(a) of the Rules, and also in consideration of the fact that there is no express agreement to the contrary by the parties. In addition, pursuant to paragraph 10(b) of the Rules and in consideration of the circumstances of this administrative Proceeding, the Panel, to ensure that each Party is given a fair opportunity to present its case, takes into account the evidential materials provided in Chinese.
4. Factual Background
The Complainant, Pchome Online Inc. is providing computer software, on-line shopping and other related services. The Complainant registered the domain name <pchome.com.tw> in 1985 and has been offering on-line shopping services at “www.pchome.com.tw” since 2000. The Complainant registered the trademark PCHOME ONLINE in the Taiwan Region of China and the People’s Republic of China in 2000 and 2004 respectively.
The Respondent registered the domain name <pchomes.cc> on January 17, 2006.
5. Parties’ Contentions
The Complainant, Pchome Online Inc., is an international well-known company, providing services including computer software system and the production, design, maintenance, examination, analyze and consultant of the computer program and database, computer leasing, internet information service and on-line shopping.
The Complainant is a leading provider of on-line shopping services which it has offered at its website “www.pchome.com.tw” since 2000. the trademarks “PCHOME” and “PCHOME ONLINE” are widely used in the Internet services, thus has become as famous as eBay and Yahoo-Kimo throughout the world for Chinese reading consumers.
The Complainant registered the domain name <pchome.com.tw> with the Taiwan Network Information Center on July 4, 1985, and is the owner of the registered trademark PCHOME ONLINE with the Intellectual Property Office of the Ministry of Economic Affairs of the Executive Yuan , Taiwan , R.O.C. from June 16, 2000, (see Annex 5 to the Complaint). The Complainant also registered PCHOME ONLINE with the Trademark Office of the State Administration for Industry and Commerce, People’s Republic of China from June 28, 2004.
On January 17, 2006, the Respondent registered <pchomes.cc> with WEBCC , to sell counterfeit luxury goods, such as LV, Gucci, Chanel and Hermes, etc. Not only is the domain name <pchomes.cc> almost identical to the distinctive part of Complainant’s famous trademark PCHOME, but its website is a blatant copy of the Complainant’s website, serving on-line shopping services with confusingly similar format and content to the Complainant’s website.
Complainant argues that the Respondent and the disputed domain name in this present case comply with the three requirements in Policy 4(a):
(i) Disputed domain name is identical or confusingly similar to the Complainant’s Trademark or service mark.
The Complainant has used the marks PCHOME and PCHOME ONLINE for over 20 years, and it registered the domain name <pchome.com.tw> since 1985 for operating on-line shopping services. Therefore, the trademarks PCHOME and PCHOME ONLINE have been widely used on the Complainant’s on-line shopping website and well known to consumers, at least in Taiwan, Hong Kong and Mainland China. The Complainant also has a trademark registration for PCHOME ONLINE in Taiwan and China.
The disputed domain name <pchomes.cc> is confusingly similar to the Complainant’s famous trademarks PCHOME and PCHOME ONLINE, as detailed below:
There is clear similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The disputed domain name is made up of the Complainant’s mark with a letter “s”. The addition of the letter “s” means “plurals”, so it does not serve to distinguish the Respondent’s domain name from the Complainant’s mark, see International Data Group, Inc. v. Lingjun, WIPO Case No. D2004-0398.
The disputed domain name is being used for services similar to the Complaint’s with an intention to confuse consumers. The Respondent is using the disputed domain name for on-line shopping website that offers almost identical logo, design and content that provided under the Complainant’s trademark PCHOME. On the end of the web page to which the disputed domain name refers, the Respondent even uses the copyright notification “Copyright PC homes Online”, which is a direct copy of the Complainant’s notification.
Consumers may mistakenly type the wrong keyword as “pchomes” and be led to the Respondent’s website. Once consumers connect to the Respondent’ website, they will see the same on-line shopping services with similar logo, design and content, thus are likely to believe that the Respondent’s website using the PCHOMES mark is associated with the Complainant. A news article on Electronic Commerce Times dated March 17,2006 commented that the “PChomes” website is only one letter different from the famous “www.pchome.cc” website, and its logo, design and content are almost identical, it is easy for consumers to get to the wrong website and mistakenly believe it is the “www.pchome.tw” website.
Moreover, there is actual confusion that has occurred in Taiwan. Some reporters mistakenly thought that the Complainant, as a famous on-line shopping operator, sold counterfeit goods in its website and reported this news. It turns out that these reporters thought that the Respondent’s “www.pchomes.cc” website is operated by the Complainant. This actual confusion has caused public attention and serious harm to the business reputation of the Complainant.
In sum, the disputed domain name <pchomes.cc> is confusingly similar to the Complainant’s famous trademarks PCHOME and PCHOME ONLINE.
(ii) The Respondent has no rights or legitimate interest on disputed domain name.
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.
The Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name considered under paragraph 4(c) of the Policy because of the following reasons:
The Respondent set up the “PChomes” on-line shopping services for the sole purpose of selling counterfeit goods, so it intentionally chose the domain name confusingly similar to the Complainant’s famous on-line shopping website in order to get free ride on the Complainant’s reputation.
There is no evidence that the Respondent’s use of the domain name was in connection with a bona fide offering of goods or services. The Respondent registered the domain name on January 17, 2006, and it is not commonly known by the domain name.
(iii) The disputed domain name is used or registered in bad faith.
The Respondent is using the domain name with the intent, for commercial gain, to misleadingly divert Complainant’s consumers to its websites or disrupt Complainant’s business. As mentioned in the news article , many consumers were misled by the Respondent’s website and such actual confusion has caused public attention and serious harm to the Complainant’s business reputation.
The Respondent has registered the disputed domain names in bad faith because the Respondent had was aware of the Complainant’s trademark rights by virtue of:
(a) the Complainant’s trademark registrations in Taiwan and the People’s Republic of China, and in many other countries;
(b) the Complainant’s use of the trademark PCHOME on the Internet, in particular the on-line shopping website, as well as use of the marks in Taiwan, Hong Kong and the People’s Republic of China;
(c) the Respondent, being a resident of the People’s Republic of China, would have had actual notice of the Complainant’s rights because of the widespread circulation of the “PChome” printed materials and well-known Internet services, in particular the on-line shopping website.
The content and the pictures on the Respondent’s website, the wording of introduction, the locations of the pictures and hyperlinks, the design of the screen, and even the slogans and Warranty Clause are the same as those on Complainant’s website. In this way, the domain name is used solely to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
By doing so, the Respondent has misappropriated the reputation and commercial value of the PCHOME trademark with a bad faith intent to profit.
The Respondent’s conduct is clear evidence of bad faith as set forth in paragraph 4(b)(iii) and (iv) of the Policy.
In accordance with paragraph 4(i) of the Policy, for the reasons described in Section V above, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark.
The Panel finds that the Complainant successfully proves these two aspects. Firstly, the Complainant enjoys the trademark right through both the trademark registrations over PCHOME ONLINE and extensive use of the mark PCHOME. Secondly, the disputed domain name, which consists of “pchomes”, is confusingly similar to the Complainant’s trademarks PCHOME and PCHOME ONLINE.
Except for the generic top-level domain designation “.cc” and the letter “s”, the disputed domain name is identical to the Complainants PCHOME mark, which is incorporated in its entirety. It has been well established by numerous cases that incorporation of the entirety of the complainant’s trademark into the dispute domain name may be sufficient to constitute confusing similarity for the purpose of the Policy. In the present case, the addition of the letter “s” to the Complainant’s mark “PChome” is too trivial to avoid confusion since the addition may well be regarded as the plural form of the Complainant’s mark, particularly by non-native English speaking audience who reside in the primary operation regions (People’s Republic of China, Taiwan Region of China, etc.) of both the Complainant and the Respondent.
Under the consensus view of the WIPO decisions under the Policy, the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity (Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110). For this reason, it is not necessary to compare the contents of the Complainant’s and the Respondent’s websites for the purpose of paragraph 4(a)(i) of the Policy.
The Panel therefore finds that the Complainant fulfills the condition provided in paragraph 4(a) (i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no legitimate rights or interests in the disputed domain name, and the Respondent provides no information asserting any rights or legitimate interests therein.
A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s knowledge (see Packaging World Inc. v. Zynpak Packaging Products Inc., eResolution Case No. AF-0233; Education Testing Service v. TOEFL, WIPO Case No. D2000-0044; Grove Broadcasting Co. Ltd. v. Telesystems Communications Ltd., WIPO Case No. D2000-0703). There is also a consensus view among panels that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name (See e.g. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252; Electronic Commerce Media Inc. v. Taos Mountain, NAF Claim No. FA0008000095344; WIPO Overview of WIPO Panel Views on Selected URDP Questions, paragraph 2.1).
Where, as here, the Complainant has made a prima facie showing of the Respondent’s lack of such right or interest that Respondent has failed to rebut, the Panel is entitled to accept that Complainant has established the second element of the Policy. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from the Respondent’s default as it considers appropriate.
The Panel therefore finds that Complaint fulfills the condition provided in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including the circumstances set out in paragraph 4(b)(iv), indicating that the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his/its 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 his/its website or location or of a product or service on his/its website or location.
Based on the Complainant’s submissions, which are not rebutted by the Respondent, the Respondent’s website at the disputed domain name is not only copying or imitating the logo, design and contents of the Complainant’s website at “www.pchome.com.tw”, but also providing on-line shopping services in a manner that is similar to the Complainant’s. Given that the disputed domain name is confusingly similar to the Complainant’s trademark and other similarities between the two parties, Internet users are highly likely to be confused as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website with the Complainant’s mark. The Respondent in all likelihood registered and is now using the disputed domain name to profit from eventual confusion. The Complainant did submit that actual confusion among consumers had occurred due to the Respondent’s use of the disputed domain name.
Based on the above finding, the Panel finds that the Respondent has registered and is using the domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy and thus the Complainant fulfills the condition provided in paragraph 4(a)(iii) of the Policy.
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 <pchomes.cc> be cancelled.
Dated: August 31, 2006