Domain name - Confusingly similar - Domain name not confusingly similar - Domain name is also a mountain - Complainant not owning mark - Domain name only small part of company name of Complainant - Past use of domain name insufficient to show that confusingly similar – Trademark in different language.

Huangshan is a mountain in China as well as the name of a city in the area.  Complainant is a registered corporation in China with several registered subsidiaries located in Huangshan City.  Complainant's business relates to tourism, travel and accomodation in the Huangshan region.  Complainant does not own a trademark for "huangshan", although all its subsidiaries incorporate Huangshan into their names.  Respondent registered the domain name huangshan.com.  Complainant had owned the disputed domain name, however a required fee was not paid and the registration lapsed.  Respondent then purchased the domain name.

Held, Name Not Transferred.

Huangshan Tourism Development Co. Ltd. is not confusingly similar to huangshan.com.  The term "Huangshan" only forms a small part of the full corporate name of Complainant.  Further, Complainant does not own a mark for "huangshan".  In the minds of ordinary people, the word Huangshan would refer to the mountain rather than to the mark of Complainant. The fact that Complainant used to operate a site under the domain name is insufficient to show that the domain name is confusingly similar.  In addition, Complainant registered its company name in Chinese characters form instead of in English character form or in Chinese Pin Yin symbol form—the Chinese name looks very different than the domain name in English.  The Complaint failed confusingly similar.  It is therefore unnecessary to engage in further analysis.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy

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Yong, Panelist: -

 1. Parties and Contested Domain Name

 The Complainant is Huangshan Tourism Development Co., Ltd of Huangshan city, Anhui Province, PR of China.  The Respondent is NA Global Link Limited of Hong Kong, PR of China.  The contested domain name is huangshan.com.

 2. Procedural History

 The electronic version of the Complaint form was filed on-line through eResolution's Website on April 29, 2000.  The hardcopy of the Complaint Form was received on May 10, 2000. Payment was received on May 11, 2000.

 Upon receiving all the required information, eResolution's clerk proceeded to:

- Confirm the identity of the Registrar for the contested Domain Name;

- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;

  - Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

 The inquiry leads the Clerk's Office of eResolution to the following conclusions: the Registrar is The Name It Corp., the Whois database contains all the required contact information but the billing contact, the contested Domain Name resolves to an inactive Web page and the Complaint
 is administratively compliant.

 An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on May 12, 2000. The requested information was received May 16, 2000.

 The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.

 The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on May 12, 2000. That date is the commencement date of the administrative proceeding.

 On May 12, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.

 On May 31, 2000, the Respondent submitted, via eResolution internet site, his response. The signed version of the response was received on June 6, 2000.

 On June 13, 2000, the Clerk's Office contacted Mr. Li Yong, and requested that he acts as panelist in this case.

 On June 20, 2000, Mr. Li Yong accepted to act as panelist in this case. On June 22, Mr. Li Yong filed the necessary Declaration of Independence and Impartiality.

 On June 22, 2000, the Clerk's Office forwarded a user name and a password to Mr. Li Yong allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

 On June 22, 2000, the parties were notified that Mr. Li Yong had been appointed and that a decision was to be, save exceptional circumstances, handed down on July 5, 2000.

 3. Factual Background

 Complainant is a registered corporation in China with a number of registered subsidiary companies.  All of the corporation and companies are located in Huangshan City of Anhui Province in China and have characters "huangshan" as part of their company names.  The services provided and products sold by Complainant are directly related to tourism, travel and
 accommodation in the Huangshan City region. Complainant is the holder of five domain names: www.huangshantourism.com, www.huangshantravel.com, www.hstd.com, www.huangshanvisiting.com, www.huangshanjourney.com.

 Respondent registered the domain name www.huangshan.com with the registrar THE NAME IT CORP. on Mar. 21, 2000.

 4. Parties' Contentions

 Complainant contends that :

(1) The domain name at issue and Huangshan Tourism Development Co. Ltd are very closely related not only in the similarity of the names, but also because Complainant has used the domain name for the last two years. The domain name could be easily confused with the company.  Early in 2000, Complainant's representative should have made a payment to renew the registration of the domain name. The payment was not made, and so the domain name was registered by someone else.

(2) NA Global link Co., Ltd does not appear to have any business interests involving Huangshan. NA Global Link Co., Ltd is not using the domain name for any legitimate and useful purposed right now and it seems that it will not do so in the future.

(3) The pattern of conduct of NA Global Link Co., Ltd indicates that the domain name has been registered in order to prevent Complainant from reflecting its service mark in www.huangshan.com.

(4) Whenever Complainant have tried to contact NA Global Link Co., Ltd by phone, by fax and by email, there has been no response. This shows that the company has violated the conditions of domain name registration and is using the domain name in bad faith.

 Respondent argued that :

  (1) Complainant does not have any trademark on huangshan or similar words.

(2) Complainant does not offer any service with service mark identical to Huangshan. Complainant is commonly referred as 'hstd' or 'Huangshan Tourism' and these are the common service mark of complainant.

(3) Complainant owns 9 companies with huangshan as part of the company name, but Huangshan.com is not identical to or confusingly similar to any of these company names.

(4) According to NSI Service Agreement and ICANN Registrar Accreditation Agreement, complainant lost its rights on huangshan.com at the moment when its registration is deleted and becomes available for registration by other parties.

(5) Respondent is not using the domain name because it is now in the planing and design phase of development.

(6) The fact the complainant's phone, fax, or emails were not responded proves that respondent does not have any idea, intention, or action of selling the domain name to Complainant or any other parties.

(7) Mountain Huangshan was given its present name in 747 A.D. Many companies use Huangshan as a part of their company names or domain names. No one has the exclusive rights to use the word huangshan in Internet as well as in company names and service names.

 5. Discussion and Findings

 In accordance with ICANN Policy, Complainant asking for transfer of the domain name must prove the following three elements:  (i) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in the domain name; and  (iii) Respondent has registered the domain name and is using it in bad faith. (ICANN policy, para. 4 (a)).

 With respect to the first element, the panel cannot find evidence to prove that Complainant owns registered trade mark or registered service mark on 'huangshan' or 'huangshan.com'. What the panel could see from the Complaint and the annexed documents is that the Complainant is a legal entity registered with the competent authority in Anhui Province in China and is having the company name 'Huangshan Tourism Development Co., Ltd'. Complainant has a right to prevent others from using this company name in a law-stipulated area, but does not have exclusive right of trade mark or service mark on the name.  Further, the panel believes that 'huangshan.com' is neither identical nor confusingly similar to the company name 'Huangshan Tourism Development Co., Ltd'. 'Huangshan' in the mind of ordinary people means a very beautiful mountain rather than a particular company or mark. Besides, the word 'huangshan' is only a relatively small part of the whole company name. People can easily make identification between the domain name and the company name.

 In addition, it comes to the panel's attention that Complainant registered its company name in Chinese characters form instead of in English character form or in Chinese Pin Yin symbol form. The word 'huangshan' in fact is the Chinese Pin Yin symbols for the pronunciation of Chinese characters for the famous mountain located in Anhui Province of China. This can be seen in Annexes of the Complaint, i.e., the Legal Entity Business Certificate No. 3400001300017. The Chinese name of the company looks very different than the domain name 'huangshan.com' which is in English character form.  The panel has noticed that the Complainant's contention that the domain name and the company name are very closely related also because Complainant has used the domain name for last two years. The panel believes that this argument has little effect to prove that the 'identical or confusingly similar criterion' is met although it might be used to challenge Respondent's purpose of registering the domain name. Therefore, the requirement of the first element is not met.

 According to ICANN Policy, para. 4 (a ), the Complainant must prove that each of the three elements are present in order to prevail. Because of the above discussion, the panel thinks that it is not necessary to make judgement on whether the Respondent has rights or legitimate interests in the domain name, and whether it has registered the domain name and is using it in bad faith. Even if Complainant proves that the 'no rights or legitimate interests' and the 'bad faith' criteria are met in this case, the remedy provided by ICANN Policy administrative proceeding could not be
 obtained.

 6. Conclusions

 For the reasons stated above, the panel concludes that Complainant fails to prove that it has registered trade mark or registered service mark, and that although Complainant owns a registered company name in China, the domain name at issue is neither identical nor confussily similar to the company name, and that it is unnecessary to analyse the second and third elements of ICANN Policy, para. 4 (a). Therefore, the panel rejects the Complaint.

 7. Signature

 Signed this 3d day of July 2000 by the lead panelist

Li Yong

Presiding Panelist

Domain Name Not Transferred
 

[Indexed as: Zale Delaware v. Tedesco]

[Indexed as: GORDONSJEWELERS.COM et al.]
Forum File No.: FA0005000094799
Commenced: 12 May 2000.
Judgment: 27 June 2000.
Presiding Panelist: Robert R. Merhige, Jr.

Domain name – Domain name dispute resolution policy – U.S. Trade Mark – Failure to respond – Identical – Confusingly similar – Bad faith registration – Distinction between “.COM” and “.NET”.

Complainant operates jewelry stores around the world and owns trademark registrations for the marks BaileyBanksandBiddle and Gordon’sJewelers in the U.S. and other countries. Respondent registered the domain names BAILEYBANDSANDBIDDLE.COM, GORDONSJEWELERS.COM and GORDONSJEWELERS.NET.

HELD, Names Transferred to Complainant.

The Respondent failed to respond to the complaint and was found accordingly in default.  It was nevertheless concluded that the domain names in issue are identical to Complainant’s marks.  As a matter of distinction, it was noted that the mark GordonsJewelers.com and GordonsJewelers.net were confusingly similar.

Respondent did not offer goods or services  under the disputed names and is not commonly known by the domain names, giving them neither rights nor a legitimate interest in any of the domain names.  It was further concluded that Respondent’s registration of the domain names was primarily for the purpose of selling or transferring them and constitutes bad faith. 
 

Policies Referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999.
 

PARTIES

The Complainant is Zale Delaware, Inc., Irving, TX, USA (“Complainant”). The
Respondent is Sandra Tedesco, New York, NY, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain names at issue are "BAILEYBANKSANDBIDDLE.COM”,
“GORDONSJEWELERS.COM”, and “GORDONSJEWELERS.NET” registered with
Network Solutions, Inc. “NSI”.

PANELIST(s)   Robert R. Merhige, Jr. as Panelist.
 

Merhige, Jr., Panelist –

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“The Forum”)
electronically on 05/09/2000; The Forum received a hard copy of the Complaint 05/12/2000.

On 05/13/2000, NSI confirmed by e-mail to The Forum that the domain names
"BAILEYBANKSANDBIDDLE.COM”, “GORDONSJEWELERS.COM”, and
“GORDONSJEWELERS.NET” are registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 05/12/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/16/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 

On 06/16/2000, pursuant to Complainant’s request to have the dispute decided by a single-member panel, the Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.  Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
 

RELIEF SOUGHT

            Complainant requests the contested names in issue be transferred to it.
 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it owns and holds rights to the domain names in issue and that Respondent has wrongfully registered the internet domain names “baileybanksandbiddle.com,” “gordonsjewelers.com,” and “gordonsjewelers.net” with Network Solutions, Inc.  Complainant also alleges that these domain names are identical or nearly identical to Complainant’s trademarks, which were registered as trademarks long before Respondent registered the domain names with Network Solutions, Inc.  Complainant further asserts that it owns the exclusive rights in these trademarks, and that the Respondent has no rights or legitimate interest in the said name.  Complainant further asserts that Respondent registered the domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant.

B. Respondent

Respondent, having failed to respond to the Complaint herein, is accordingly in default.
 

FINDINGS

The record reflects that Complainant is a jewelry retailer headquartered in Irving, Texas.  Complainant sells jewelry through retail stores and over the internet, having opened its first store in Wichita Falls, Texas, in 1924.  As of the date of the filing of the Complaint herein, Complainant operates in excess of 1,000 jewelry stores throughout the world and owns trademark registrations for the marks BaileyBanksandBiddle®, Gordon’sJewelers®, in the United States and in a number of other countries.  As a consequence of these registrations, it is a fair conclusion that trademark registration offices around the world have recognized the Complainant’s exclusive rights in the marks in issue by virtue of said offices having granted registration marks.  Specifically, the mark BaileyBanksandBiddle® was registered for jewelry store services on July 31, 1979; the mark Gordon’sJewelers® was registered for retail jewelry store services on March 5, 1991.

The record further reflects that Respondent is not offering goods or services under these names and is not commonly known by the domain names.  I find that Respondent does not have any rights or legitimate interest in any of the domain names in issue and further that Complainant has the exclusive right to each of those names. 

I further conclude from the unrefuted record that Respondent’s registration of the domain names in issue was primarily for the purpose of selling or transferring them and her use of them as reflected in the record constitutes bad faith.

Accordingly, I conclude that Complainant has borne its burden of proof as required by Paragraph 4(b)(i)(ii) and (iii) of ICANN’s Uniform Name Dispute Policy.
 

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs
that the complainant must prove each of the following three elements in order to
demonstrate claims that a domain name should be cancelled or transferred:

(1) the domain name registered by the respondent is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; and

(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.

The record reflects that the domain names in issue are, as a practical matter, identical to Complainant’s marks.  The only minor distinction, which at the least is confusingly similar to Complainant’s mark, is that in the mark GordonsJewelers.com there is the addition of the letters “.net.”

Identical and/or Confusingly Similar

Each of the domain names in issue appear to be identical to those marks which are owned by the Complainant herein. 
 

DECISION

Based on the above-stated findings, it is Ordered as follows:

That the domain names BaileyBanksandBiddle.com, GordonsJewelers.com and GordonsJewelers.net be forthwith transferred to the Complainant.

The undersigned certifies that he has acted independently and has no known conflict in serving as the arbitrator in this proceeding.

Robert R. Merhige, Jr.
Dated:   June 27, 2000