ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The complainant is Beijing Pernod Ricard Winery of 2, Yu Quan Road, Beijing, China.
The respondent is Capital Enterprises Group, Inc., of 721, 5th Avenue, Apt. 54A, New York, NY, United States of America.
The domain name in dispute is dragonseal.com. The registrar is Network Solutions, of Herndon, Virginia, USA.
2. Procedural History
The electronic version of the complaint was filed on-line through eResolution's Website on April 5, 2000. The hardcopy of the complaint was received on April 14, 2000. Payment was received on May 2, 2000. The complainant's choice of jurisdiction was received on June 1, 2000.
Upon receiving all the required information, eResolution's clerk sought to:
- confirm the identity of the registrar for the contested domain name;
- verify the registrar's Whois database and confirm the required contact information for the respondent;
- ascertain whether the contested domain name resolved to an active web page;
- ascertain whether the complaint was administratively compliant.
The inquiry led the clerk of eResolution to the following conclusions: the registrar is Network Solutions Inc.; the Whois database contains all the required contact information; the contested domain name resolves to an inactive web page and the complaint is administratively compliant.
On May 2, 2000 the clerk sought from the registrar a copy of the registration agreement. This was received May 9, 2000.
The clerk then sent the respondent a copy of the complaint and the required cover sheet in accordance with paragraph 2 (a) of ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (« the Rules »).
The clerk fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the complaint to the respondent on June 1, 2000. That date is the commencement date of the administrative proceeding.
On June 1, 2000, the clerk's office notified the complainant, the respondent, the registrar, and ICANN of the date of commencement of the administrative proceeding.
The respondent did not submit a response.
The e-mail sent by the clerk to the respondent at firstname.lastname@example.org was returned 'undeliverable'. The fax to the respondent's technical contact was not received but the faxes sent to the respondent's designated domain name holder, administrative contact and billing contact were successfully transmitted. The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the UPS tracking system, all were delivered.
On June 21, 2000, the clerk asked Mr. Alan Lawrence Limbury to act as panelist in this case. On June 23, 2000, Mr Limbury agreed and filed the necessary Declaration of Independence and Impartiality.
On June 23, 2000, the clerk forwarded a user name and a password to Mr. Limbury, allowing him access, through eResolution's automated docket management system, to the complaint, any response and the evidence.
On June 23, 2000, the parties were notified that Mr Limbury had been appointed and that a decision was expected by July 5, 2000, save in exceptional circumstances.
On June 27, 2000, the panel informed the clerk that the panel wished the complainant to have the opportunity to provide evidence in support of certain assertions under the heading « Bad Faith » and that the respondent be given an opportunity to comment on any material provided by the complainant in response. The panel extended the projected date for the decision to July 12, 2000.
The panel's request was received by the complainant on 6 July and the information was provided to the clerk's office next day. The respondent was given until midnight on July 13, 2000 to respond to the additional information provided by the complainant and the Panel extended the time for the making of the decision until July 19, 2000.
The respondent did not respond.
3. Factual Background (undisputed facts)
The complainant is a member of the Pernod Ricard group of companies. It produces and distributes in China a range of wines under the trademark Dragon Seal, which it registered there in 1988 in international class 33 in relation to wines (registration number 328309, valid to 2008). It also exports Dragon Seal wines to about 20 other countries. Under that name its wines have won many awards in international competitions. The parent company, Groupe Pernod Ricard, has registered the Dragon Seal trademark in 30 other countries.
Since 1988, Dragon Seal wines have become very famous in China. Internationally, in the wine industry, those wines have gained the reputation of being the best Chinese wine.
The name Dragon Seal came about because Dragon is the symbol of China. The Chinese people always call themselves descendants of the dragon. In China dragon means China or Chinese. Seal is a traditional Chinese stamp, still used even since ancient times. When Groupe Pernod Ricard established its joint venture in China in 1987, its mission was to produce in China a high quality Chinese wine with rich Chinese traditions and "full Chinese impression". Dragon Seal wine is a 100% Chinese product.
Another reason why the complainant gave the name Dragon Seal to its wines was that the first bottle was launched in 1988, the year of the dragon according to the Chinese calendar. "The wine is an impression or seal of what we gave to the world".
4. Parties' Contentions
The complainant relies on the undisputed facts set out above and the following additional matters.
Copy or similarity
Since 1988, the trademark Dragon Seal has become very famous in China and also internationally well known. The respondent's domain name was registered in 1996. It must be a copy of the complainant's brand.
All the trademark registrations are protected by international laws. Dragon Seal was registered as a trademark 8 years earlier than the domain name. The trademark Dragon Seal and the products sold under this trademark are well known to consumers. The domain name holder's registration of the complainant's brand name as a domain name is not legal.
After registration of the domain name, the respondent never used it. The web site is completely empty. The domain name holder did not prepare even one web page for it during the last 4 years. From the above facts it cannot be thought that the domain name holder really needs this domain name. He registered this domain name for a bad motive or a malicious purpose. The domain name holder is accustomed to taking other famous trademarks or service marks as his domain name. In China, we all know that [it] is registered by CINET, the boss is the domain name holder of [sic], Mr Zhao Huiqun.
There was no response to the complaint.
5. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(1) the disputed domain name 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 disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The domain name dragonseal.com is clearly essentially identical to the trademark Dragon Seal owned by the complainant in China and by its parent company, Groupe Pernod Ricard in other countries. The addition of the .com top-level domain cannot prevent the inescapable conclusion that, in the market for the supply of wines to consumers in China and internationally within the wine trade, the domain name and the trademark are confusingly similar and the panel so finds.
The complainant has established this element.
Rights or legitimate interests
The Policy sets out in paragraph 4(c) three circumstances, any of which, if proved, demonstrate the respondent's rights to or legitimate interest in the domain name for the purposes of paragraph 4(a)(ii). These are:
(i) before any notice to you 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;
(ii) you….have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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.
Although this paragraph is couched in terms which contemplate the respondent "demonstrating" its rights or legitimate interest, it is for the complainant to establish their absence.
The respondent has offered nothing on any issue in this administrative proceeding. Based on the material provided by the complainant, it appears the respondent has made no overt use of the domain name over the 4 years since registration and that the respondent is known by the name Capital Enterprises Group, Inc. The registrar confirms the web site is inactive. There is therefore positive evidence that the respondent is not making any overt use of the domain name and has not done so for the period of 4 years since registration. The panel finds that the respondent has no legitimate interest in the domain name.
The complainant has established this element.
Paragraph 4(a) of the Policy provides some non-exhaustive examples of circumstances that, if found by the panel, shall be evidence of the registration and use of a domain name in bad faith.
The first requires proof that the registrant's primary purpose was to sell, rent or otherwise transfer the domain name to the complainant or to its competitor. There is no evidence of any such purpose here.
The second requires proof of a purpose to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that there has been a pattern of such conduct. The Complainant asserted that the domain name holder is accustomed to taking other famous trademarks as his domain name, and was invited to provide evidence of this.
The third requires proof of a purpose to disrupt the business of a competitor. There is no evidence the parties are competitors.
The fourth requires proof of intent to attract Internet users for commercial gain to the web site by creating likely confusion. Since the web site is inactive, the evidence tends to disprove this.
The Policy distinguishes between each of the 3 elements, thereby giving to the concept of bad faith a content additional to lack of legitimate interest in the name. Here the respondent is shown to have registered as a domain name a famous trademark in which it has no legitimate interest and which it has not used overtly since registration, 4 years ago. The registration is preventing the complainant registering its trademark as a domain name
The panel requested evidence from the complainant to support the assertion:
« the domain name holder is accustomed to taking other famous trademarks or service marks as his domain name. In China, we all know that [it] is registered by CINET, the boss is the domain name holder of [sic], Mr Zhao Huiqun ».
The complainant provided material in Chinese with partial translation into English. The panel had regard only to the translations. The material establishes that:
(a) Mr Zhao Huiqun is and since 1996 has been Chairman of Beijing Cinet Information Co. Ltd. (otherwise known as Beijing Guo Wang Xinxi Zeren Gongsi) (« the company »);
(b) the company was founded in March 1996 in China, with a branch in New York;
(c) China Internet Network (CINet) was the second high-tech ISP company in China ;
(d) the company registered 10% of China's super domain names (more than 2000 domain names in 3 years, including internationally renowned companies' domain names such as those of Du Pont, P & G, IKEA etc);
(e) the company owns the web site cinet.com.cn;
(f) on June 22, 2000, the company was found by Judge Wang Fanwu of the Beijing Second People's Intermediate Court to have infringed the trademark rights of Inter IKEA Systems B.V. by registering the domain name www.IKEA.com.cn;
(g) the judge also found the company had registered a host of different domain names that are the same as other well-established trademarks;
(h) registration details available from CINNIC show the company registered the domain names ikea.com.cn, dupont.com.cn, whisper.com.cn and cartier.com.cn, in each case giving the web address cinet.com.cn as at least one of the contact addresses;
(i) the Whois database reveals the Respondent (Capital Enterprises Group, Inc. of New York) registered the domain names sinonic.com and dragonseal.com, giving the web address cinet.com.cn as at least one of the contact addresses;
(j) Mr Zhao Huiqun stated in an interview published in 'China Business' on February 22, 2000 that in 1996 he registered a commercial web site in the States named sinonic;
(k) Mr Zhao Huiqun is shown in the Whois database as Administrative Contact, Technical Contact, Zone Contact and Billing Contact in relation to sinonic.com and as Administrative Contact and Billing Contact in relation to dragonseal.com.
The panel considers this information establishes that the respondent, the New York branch of the company, registered the domain name dragonseal.com in order to prevent the owner of the trademark Dragon Seal from reflecting the mark in a corresponding domain name. Although there is no evidence that the respondent itself has engaged in a pattern of such conduct, it is clear that the company, of which the respondent is the New York branch and Mr Zhao Huiqun is the Chairman, has engaged in such a pattern of conduct.
As mentioned, the examples in paragraph 4(b) of the Policy are not exhaustive of the circumstances which evidence bad faith. The panel finds that the close association between the respondent, the company and Mr Zhao Huiqun (manifested particularly in the common use of the web contact address cinet.com.cn for the disputed domain name and for other famous names) is such as to enable the conclusion to be comfortably drawn that the respondent registered and used the disputed domain name in bad faith. The panel so finds.
Accordingly the panel finds that the complainant has established this element.
The complainant having established to the satisfaction of the panel all the elements required under paragraph 4(a) of the Policy, the panel requires the registrar to transfer the domain name dragonseal.com to the complainant Beijing Pernod Ricard Winery Co. Ltd, pursuant to paragraph 4(b)(i) of the Policy.
July 18, 2000
(s) Mr. Alan Lawrence Limbury