Hongdou Group v. Ms. Li Li
Claim Number: FA0205000113258
Complainant is Hongdou Group, Jiangsu Province, CHINA (“Complainant”) represented by Zhu Changyong, of HiChina Web Solutions Limited. Respondent is Ms. Li Li, Kowloon, HONG KONG (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hongdou.com>, registered with Namescout.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 6, 2002; the Forum received a hard copy of the Complaint on April 29, 2002.
On May 6, 2002, Namescout.com confirmed by e-mail to the Forum that the domain name <hongdou.com> is registered with Namescout.com and that the Respondent is the current registrant of the name. Namescout.com has verified that Respondent is bound by the Namescout.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on May 29, 2002.
On July 8, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant is the owner of several registrations worldwide for the mark HONGDOU.
2. The disputed domain name <hongdou.com> uses the identical text as Complainant’s mark, “Hongdou.”
3. Respondent has no rights or legitimate interests in the HONGDOU mark.
4. Respondent registered the domain name <hongdou.com> in bad faith.
1. Respondent asserts that Complainant’s alleged HONGDOU mark is a Chinese Pinyin, a kind of seed of a traditional Chinese plant. Respondent further argues that if Complainant’s mark is translated directly into English its meaning is “red bean.” Respondent states that “Hongdou” is very famous and meaningful for all Chinese people as being symbolic of love and “missing-you.” Respondent argues that Complainant’s alleged mark is generic, and that Complainant cannot establish significant secondary meaning in the mark because “Hongdou is [part] of China[‘s] cultural heritage, like [the] Great Wall, panda or dragon, [a] phoenix to Chinese people.”
2. Respondent does have legitimate interests in a common word or description that is generic, such as “HONGDOU.”
3. Respondent is operating a legitimate web site in good faith.
The requested relief should be denied.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order 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;
(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.
Identical and/or Confusingly Similar
Respondent’s <hongdou.com> domain name is identical to Complainant’s registered HONGDOU mark as it mirrors Complainant’s mark in its entirety, in spelling and form. The addition of a generic top-level domain (“gTLD”) is insignificant when determining “identicality” pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the gTLD “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Rights or Legitimate Interests
Respondent argues that “Hongdou” represents a Chinese emotional attachment, and not Complainant’s trademark in clothes. Respondent makes reference to CIHAI (China’s authoritative dictionary) which states the definition of “Hongdou” as, “A general description of seeds of certain plants, red color some have a black bottom or black spot on the surface. From ancient times, it is usually regarded as the symbol of love or missing-you.”
Respondent is using the generic “Hongdou” word in connection with its website. Respondent has developed the website since registering the domain name on March 18, 2002 and desires to develop the Chinese Hongdou Festival into something similar in scale to the “West’s Valentine’s Day.” Respondent’s development of the website, in connection with its domain name reflecting a generic Chinese word, represents a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that Respondent sells); see also Sweeps Vacuum & Repair Ctr., Inc. v. Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a generic domain name, <sweeps.com>, where Respondent used a legitimate locator service (goto.com) in connection with the domain name); see also Shirmax Retail Ltd. v. CES Mktg., Inc., AF-0104 (eResolution Mar. 20, 2000) (stating “given the generic nature of the domain name, [Respondent] has at least a tenable argument that its use on the web merely for the purpose of redirecting visitors to a different site constitutes a legitimate fair use, as long as this use is not misleading to consumers and does not tarnish a trademark”).
Respondent demonstrates, pursuant to Policy ¶ 4(c)(ii), that it is currently providing the original meaning of “Hongdou” via its disputed <hongdou.com> website. See Western Hay Co. v. Forester, FA 93466 (Nat. Arb. Forum Mar. 3, 2000) (finding that Respondent was using the domain names for a legitimate purpose); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding legitimate interests in the domain name <racegirl.com> where domain name is generic and generally descriptive of Respondent’s love of racing and where Respondent intends to use the domain name for the noncommercial purpose of encouraging women racecar drivers).
Respondent maintains that it registered the disputed domain name free of any motivation to commercially benefit from Complainant’s mark, as Respondent claims it had no knowledge of Complainant. Respondent asserts that the website is non-profit, and does not buy or sell any goods but imparts knowledge of traditional Chinese culture and represents a legitimate noncommercial use of the domain name under Policy ¶ 4(c)(iii). See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that Respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose); see also Baja Marine Corp. v. Wheeler Tech., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the Respondent has rights and legitimate interests in the domain name where Respondent made a non-commercial use of BAJABOATS.COM and received no funds from users of the site connected to the domain name).
Registration and Use in Bad Faith
As Respondent is determined to have rights and legitimate interests in the disputed domain name, a finding of bad faith is precluded. Respondent never intended to sell or transfer the domain name, was unaware of Complainant’s presence or rights in an unrelated industry reflecting a generic mark, and never intended to commercially benefit from the registration and use of the website. See Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that after Respondent is determined to have rights and legitimate interests in the disputed domain name, there is no need to decide the issue of bad faith); see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d)(1)(B)(ii), "[b]ad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."
Accordingly, the Panel finds for the Respondent, and the relief requested by the Complainant is hereby DENIED.
John J. Upchurch,
Dated: July 17, 2002
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