ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is Haier Group Corporation of Haier Industrial Park, Hi-tech Industrial District, Qingdao City, Shandong Province, P.R.China.
The Respondent is Shenzhen Wany Computer Technology co. Ltd. of Suite 900, 10665 Jasper Ave., Shenzhen, Guangdong Province, P.R.China.
The contested domain name is haier.net.
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on December 6, 2000. The hardcopy of the Complaint Form and annexes were received on December 19, 2000. Payment was received on December 22, 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 essential contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
This inquiry lead 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.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on December 6, 2000. The requested information was received on December 11, 2000.
The Clerk 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on December 28, 2000. This date is the official commencement date of the administrative proceeding.
Only the email to the email@example.com was returned 'undeliverable'.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.
On January 15, 2001, the Respondent submitted, via eResolution Internet site, his response. On January 29, 2001, the Clerk's Office granted an extension of 48 hours to the Respondent to submit the signed hard copy of the response, which was received by the Clerk's Office on January 31st, 2001.
On February 2, 2001, the Clerk's Office contacted Mr. Li Yong, and requested that he acts as Panelist in this case.
On February 6, 2001, Mr. Li Yong, accepted to act as Panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On February 6, 2001, 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 February 6, 2001, the parties were notified that Mr. Li Yong had been appointed and that a decision was to be, save exceptional circumstances, handed down on February 20, 2001.
On February 10, 2001, the Panel informed the Clerk's Office by e-mail that parts of the Response could not be viewed through eResolusion's web site possibly because of the compatibility problem, and asked for readable version.
On February 13, 2001, the Clerk's Office sent to the Panel the Response in word version by e-mail. In the same day the Panel asked to extend the deadline of the decision to February 25, 2001.
On February 13, 2001, the Clerk's Office informed the Panel by e-mail that the request for extension of time was allowed.
3. Factual Background
The Complainant states, the Respondent does not dispute and the Panel accepts the following: The Complainant, Haier Group Corporation (hereinafter referred to as Haier), is a super-large State-owned enterprise, manufactures a huge range of domestic appliances covering 42 major categories and more than 9,000 models. In a worldwide survey by the American periodical Appliance, Haier ranked first among the fastest-developing domestic electrical appliance enterprises in front of some famous American brands. The Financial Times placed Haier seventh in the list of outstanding Asian transnational companies. Haier was the only Chinese enterprise in the top ten. The American periodical Fortune published a comprehensive report on Haier that attracted worldwide attention. Haier has gained a worldwide reputation with products exported to over 100 countries and regions. Haier was the first manufacturer in China to be given ISO9001 accreditation early in 1992. Haier Laboratory has been granted equivalent-qualification status by the standards organizations UL of the US and CSA from Canada. Haier products include refrigerators, freezers, air-conditioners, washing machines, micro-wave ovens, dishwashers, water heaters, TV sets, VCDs, telephones, residential facilities and other small appliances. These have gained more than 20 international quality and safety approvals, such as UL, CSA, VDE, SAA, S-Mark. Haier was founded in 1984. Since then Haier has grown from a small factory to a nationally well recognized home appliance giant. On May 20, 1997, Haier filed an application with the United States Patent and Trademark Office to register "haier" as its English trademark. The registration was granted on February 16, 1999 and will stay effective for ten years. Since 1996 Haier has registered domain names haier.com, haier.com.cn, ehaier.com, chinahaier.com, etc.
Part 2 of this decision has mentioned that the Clerk of eResolution concludes according to the inquiry that the contested domain name resolves to an inactive web page. However, according to the documents supplied, the Complainant states and the Respondent does not dispute that a web site has been set up with the domain name at issue and the site provides content that has nothing to do with Haier's products and services. Therefore, the Panel holds that the contested domain name resolves to an active web page.
4. Parties' Contentions
The Complainant contends that the domain name at issue is run by a company that has nothing to do with Haier Group Corporation and a web site has been set up with the domain name, and the site provides content that has nothing to do with Haier's products and services.
The Complainant contends that Haier has been nationally famous since late 1980's, many state leaders often visit Haier and the national media have given it wide coverage, the entity running the web site "www.haier.net" has nothing to do with Haier and has sought no authorization from the Haier to use the domain name.
The Complainant contends that the domain name at issue was registered by the Respondent in November 1999, long after "haier" became a national brand and long after the Complainant registered haier.com, haier.com.cn, chinahaier.com, etc.
The Respondent contends that "haier" is Chinese Pin Yin for child; that the use of the domain name at issue by the Respondent is bona fide; that there is no circumstance of bad faith registration and that the domain name is used by the respondent without intention for commercial gain and to mislead consumers or to tarnish the trademark at issue.
5. Discussion and Findings
In accordance with ICANN Uniform Domain Name Dispute Resolution Policy (hereinafter referred to as Policy), the complainant asking for transfer of a domain name must prove the following three elements: 1) the respondent's 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 the domain name; and 3) the respondent has registered the domain name and is using it in bad faith. (Policy, 4 (a)).
Rules 15(a) provides that the Panel shall decide the complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Since both the Complainant and the Respondent are based in China, it is appropriate for the Panel to look to the rules and principles of Chinese law or judicial practice when necessary to the extent that it would assist the Panel in determining whether the Complainant has met the burden imposed by Policy 4(a). See Exario Networks Inc. v. The Domain Name You Have Entered Is For Sale, Case No. AF-0538 and the other decisions referenced therein.
Identical or Confusingly Similar
The domain name at issue is "haier.net". Evidence submitted by the Complainant shows that the Complainant owns trademark right for the word "haier". The domain name at issue incorporates in full the word "haier". It is apparent that the domain name at issue is confusingly similar to the trademark in which the Complainant has trademark right. Adding a TLD (.net) does not have any significant meaning to distinguish between the domain name and the trademark word. Therefore the Panel believes that the first element is met.
Respondent's Rights or Legitimate Interests in the Domain Name
Policy 4(a)(ii) requires the Complainant to prove that the Respondent has no rights or legitimate interests in the domain name at issue. However, because it is difficult for a complainant to prove that a respondent has no rights or legitimate interests in a domain name, and such information is known to and within the control of the respondent, the burden on the Complainant in this regard is relatively light. See Exario Networks Inc. v. The Domain Name You Have Entered Is For Sale, Case No. AF-0538, Packaging World Inc. v. Zynpak Packaging Products Inc., Case No. AF-0233; Educational Testing Service v. Netkorea Co., Case No. D2000-0087, and Grove Broadcasting Co. Ltd. v. Telesystems Communications Limited, Case No. D2000-0158.
Policy 4(c) describes the following three circumstances which can demonstrate the Respondent's rights or legitimate interests to the domain name:
(i) before any notice to the Respondent of the dispute, the Respondent's 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) the Respondent (as an individual, business, or other organization) 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 or service mark at issue.
Upon studying the documents supplied, the Panel is unable to find any of the above circumstances existing. There is no evidence relating to circumstances (ii) and (iii). Although the domain name resolves to an active web page, no evidence shows the Respondent's use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services before the notice of the dispute. In this regard, the Respondent only argues that "haier" is used by the Respondent to establish an "address guide web" because " haier" is the Chinese Pin Yin for " child " pronunciation. The Respondent asserts that " child ", when pronounced as " haier ", is familiar to Chinese people and easy to remember. However, to the knowledge of the Panel, and taking into consideration the strength of the famous trademark for " haier " and the reputation and influence of the Complainant in China, people, when reading the term"haier"or hearing the pronunciation, could easily obtain the image of Haier Group (the Complainant) or its goods or services rather than to think about a child. Even if the Respondent was offering goods or services by using the domain name before the dispute, the Panel can not conclude that it was bona fide because using the term " haier " as domain name of the " address guide web " would apparently mislead the consumers.
Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the domain name. The Panel finds that the Respondent has no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
Policy 4(b) specifies four types of circumstances which could be evidence of the registration and use of a domain name in bad faith. According to Policy however, circumstances of bad faith are not limited to the listed ones.
To analyze whether the domain name at issue has been registered and used in bad faith, the following has been noticed by the Panel :
(i) " haier" is a fancy and coined term without descriptive and generic meaning in English and other languages foreign to Chinese.
(ii) The term "haier" is a famous and strong trademark owned by the Complainant.
(iii) "haier" is the trade name of the Complainant, namely Haier Group Corporation which is a nationally well-known, high profile and fast-growing enterprise.
(iv) The domain name at issue incorporates in full the term "haier". There is virtually no difference between the domain name at issue and the term "haier" on which the Complainant has rights.
(v) Using the term "haier" as a domain name in Internet can easily lead the consumers to a misunderstanding that the one who is using the term has some thing to do with the Complainant. It is unlikely that the consumers think about the Chinese Pin Yin for "child" when they see the term "haier".
(vi) Considering the facts that the Respondent is a Chinese company located in China and "haier" is a nationally well recognized trademark and a well-known company name, it is inferred that the Respondent had the knowledge of the Complainant's trademark and its goods and services at the time the domain name was registered.
Taking into consideration the above elements in combination, the Panel finds that the domain name was registered and used in bad faith.
To further support the above conclusion, the Panel would like to cite the principles which have been established in recent Chinese judicial decisions. According to the principles, well-know trademark should enjoy special and expanded protection with higher level than ordinary trademarks. The scope of the protection should be extended to those goods or services which are not similar to the ones designated by the well-known trademark. Registering other's well-known trademark as domain name and using it without permission would absolutely infringe the trademark right of the trademark owner. See the Procter & Gamble Company v. Beijing Tiandi Electronic Group, Beijing Intermediate People's Court, No. 2000-49, Nov. 21, 2000, Du Pont v. Beijing Guowang Information Ltd., Beijing Intermediate People's Court, No. 2000-11, Nov. 11, 2000.
The Panel concludes (a) that the domain name "haier.net" is confusingly similar to the trademark owned by the Complainant, (b) that the Respondent has no rights or legitimate interest in the domain name and (c) that the Respondent has registered and used the domain name in bad faith. Therefore, the Panel orders that the domain name "haier.net" be transferred to the Complainant.
Signed this 23rd day of February 2001 by the lead Panelist Li Yong in Beijing, China
(s) Li Yong