ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant, Hongdou Group, brings this action against the Respondent, Gong Yen Yuan, pursuant to ICANN's Uniform Dispute Resolution Policy (the "Policy") seeking transfer of the registration of the domain name hongdou.com (the "Domain Name"). The Domain Name was registered through the domain name registrar Bulkregister.com (the "Registrar").
2. Procedural History
The Complainant filed the Complaint online through eResolution's web site on July 31, 2000. Payment was received on August 3, 2000. The hardcopy of the Complaint Form was received August 7, 2000. On August 9, 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 August 18, 2000, the Complainant informed the Clerk's Office that the Domain Name had been transferred to a different holder on August 16, 2000. eResolution's Secretariat requested the Registrar to state whether the Respondent had complied with Section 8(a) of the Policy, which provides, in relevant part, that a domain name registration holder "may not transfer [its] domain name registration to another holder during a pending administrative proceeding . . . unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the . . . arbitrator." On August 23, 2000, the Registrar sent an email message to the Respondent and to the transferee domain name holder, asking the parties to contact the Registrar to establish whether they had complied with Section 8(a). On August 29, 2000, apparently having received no response from the parties, the Registrar cancelled the August 16 transfer and transferred the Domain Name back to the Respondent. On August 30, 2000, the Clerk's Office notified the Complainant and the Respondent that the Respondent had failed to respond to the Complaint. The Panel has not been notified of any further communication from the Respondent.
Section 5(e) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy provides: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint." Accordingly, all of the facts stated in the Complaint are assumed to be true for purposes of evaluating whether the Domain Name should be transferred pursuant to the Policy.
3. Factual Background
All facts discussed herein are derived from the Complaint. The Complainant is a leading garment manufacturer in China and has used the HONGDOU trademark since 1983. The Complainant exports products to many countries, including Germany, Japan and the United States. The Complainant owns trademark registrations for HONGDOU and Design in Singapore, United Kingdom, Canada, United States and Australia. The Complainant also obtained a Certificate for Name Brand from the Brandname Bureau of the State Administration of Industry and Commerce of China.
The Complainant registered the Domain Name in early 1997, but its registration expired when the negligence of one of the Complainant's employees resulted in the failure of payment of renewal fees. The Complainant still owns registrations for the domain names chinahongdou.com, hongdou.net and hongdou.com.cn.
The only activity for which the Respondent appears to be using the Domain Name is a web site that invites visitors to leave messages on a message board. The Complainant alleges that disparaging messages regarding the Complainant have been left on the message board.
4. Parties' Contentions
The Complainant contends that the Domain Name is identical to its trademark, that the Respondent has no legitimate interest in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Respondent has not responded to the Complainant's allegations.
5. Discussion and Findings
Section 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the 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 domain name has been registered and is being used in bad faith.
The Complainant's trademark registrations are for a design mark, which consists of a shield, the word HONGDOU, and what appear to be Chinese characters. The Panel finds that the word HONGDOU is the dominant portion of the mark and that because the Domain Name is identical to the dominant portion of the mark, it is confusingly similar to the Complainant's trademark. Further, the word HONGDOU is identical to the dominant portion of Complainant's trade name, « Hongdou Group. »
B. Respondent's Interest in Domain Name
A respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue
The word «Hongdou » does not form any part of the Respondent's name and the Respondent has not provided the Panel with any evidence that it is using or making preparations to use the Domain Name in connection with a bona fide offering of goods or services. Further, according to the Complaint, the Respondent's activity on the web site of inviting parties who access the site to leave messages does not appear to be serving any legitimate business or fair use purpose. Accordingly, the Panel finds that the Respondent does not have any right or legitimate interest in respect of the Domain Name.
C. Bad Faith
Section 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(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 that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. Other circumstances can demonstrate bad faith.
The Complainant alleges that its longstanding use of its trademark has made the mark well-known among Chinese consumers and that it is highly unlikely that the Respondent, whose address is in the neighboring Zhejiang Province would be unaware of the Complainant's trademark rights in the HONGDOU mark. Further, as noted above, the Respondent does not appear to have any legitimate interest in using the Domain Name. Presuming the allegations of the Complaint to be true, it appears that the Respondent acquired the domain name either to attempt to sell it to the Complainant or a competitor for valuable consideration in excess of the out-of-pocket costs, or to disrupt the Complainant's business, or to divert users who are looking for the Complainant's web site to the Respondent's site.
The Respondent's violation of Section 8 of the Policy by transferring the Domain Name after receiving notice of the commencement of this proceeding without obtaining written agreement of the transferee to be bound by the decision of the Panel provides additional evidence of the Respondent's bad faith registration and use of the Domain Name.
Because the Complainant has proved the three elements required for transfer of the Domain Name, the Panel orders that the Domain Name be transferred to the Complainant.
Signed, this 18th September, 2000 in Boston, Massachusetts