National Arbitration Forum

 

DECISION

 

Neptune Orient Lines Limited v. cnwonder.com c/o Wu Guiqiang

Claim Number: FA1002001310401

 

PARTIES

 

Complainant is Neptune Orient Lines Limited (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, San Francisco, California, USA.  Respondent is cnwonder.com c/o Wu Guiqiang (“Respondent”), represented by Justin Yu, Beijing,  China.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

 

The domain name at issue is <nol.com>, registered with Answerable.com (I) Pvt. Ltd.

 

 

PANEL

 

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.

 

Fernando Triana, Esq., as Panelist.

 

 

PROCEDURAL HISTORY

 

Complainant submitted electronically the Complaint to the National Arbitration Forum on February 26, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.

 

On March 2, 2010, Answerable.com (I) Pvt. Ltd confirmed by e-mail to the National Arbitration Forum that the <nol.com> domain name is registered with Answerable.com (I) Pvt. Ltd and that the Respondent is the current registrant of the name.  Answerable.com (I) Pvt. Ltd has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd 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 March 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nol.com.  Also on March 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Respondent's Response was received in electronic format only on March 22, 2010.  Respondent did not indicate assent to participate in an electronic process through submission of an opt-in form prior to the Response deadline; therefore Respondent’s submission was required to be sent in hard copy per the version of UDRP Rule 5 currently in effect.  Therefore, the Response was deemed deficient by the Forum under ICANN Rule 5 because a hard copy was not received prior to the Response deadline.

 

Complainant’s Additional Submission was received on March 26, 2010 in compliance with Supplemental Rule 7. 

 

Respondent’s Additional Submission was received on March 29, 2010 in compliance with Supplemental Rule 7. 

 

On March 30, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq., as Panelist.

 

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

 

PARTIES’ CONTENTIONS

 

 

A.     Complainant

 

Complainant, Neptune Orient Lines Limited, alleges that it holds trademark registrations with the Hong Kong trademark authority (Reg. No. 301,371,294 issued December 29, 2009) and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 8,384,133 issued January 12, 2010) for its NOL mark.  Complainant asserts that it applied for these trademark registrations on June 24, 2009. Likewise, Complainant alleges that it provides transportation services, specifically container transportation, terminal operation, and supply chain management.  According to Complainant, it offers these services under its NOL mark that it has used in commerce since 1968.  Complainant claims that it employs nearly 10,000 people around the world.  Complainant contends that its operating arms work under its APL mark and that it is well known around the world, but especially in the Asian transportation market.  Complainant also alleges that it owns the <nol.com.sg> domain name and uses it to host the company website. Complainant contends that Respondent’s <nol.com> domain name is identical to Complainant’s NOL mark and argues that Respondent’s disputed domain name adds the generic top level domain (“gTLD”) “.com.” 

 

Complainant argues that Respondent is not commonly known by the <nol.com> domain name and alleges that Respondent is not licensed or authorized to use Complainant’s NOL mark.  Complainant claims that Respondent uses the <nol.com> domain name to resolve to a website offering advertisements to domain name reseller and auction websites unrelated to Complainant. It further alleges that some of these advertisements are pop-up advertisements that force Internet users to click through them before accessing Respondent’s website.  Complainant asserts that such use resembles mouse-trapping. 

 

Through its supplemental Filing, Complainant argues that after consulting with the Trademark Office in China, he reached the conclusion that the marks registrations asserted by Respondent as Exhibits 10 and 11 are not official documents and at best, indicate that Respondent’s agent may have filed such applications on February 9, 2010. Complainant also points out that it deems as suspicious the foregoing situation and believes that the referenced trademark applications could have been falsified.

 

Finally, Complainant argues that Respondent’s use of the <nol.com> domain name is a part of a pattern of bad faith use and registration. 

 

 

B.     Respondent

 

Respondent argues that Complainant has not established rights in Complainant’s NOL mark.  Respondent contends that Complainant’s evidence supports rights in Complainant’s NEPTUNE ORIENT LINES LIMITED mark, that Complainant has not provided sufficient evidence that Complainant has rights in the NOL mark.  Respondent claims that the web pages and written materials contained in Complainant’s Exhibits were created solely for the Complainant and that they are not proof Complainant used the NOL mark. 

 

Respondent claims that it is commonly known by the <nol.com> domain name while alleges that it is known, in English, as “ShenYang Name Online Tech Co., Ltd.”  Respondent contends that “Shenyang NOL” is what it is commonly referred to. Respondent also contends that it makes a bona fide offering of goods or services on the website resolving from the <nol.com> domain name.  Respondent argues that it provides a trading platform between domain name sellers and buyers.

 

Respondent contends that it has established rights in the <nol.com> domain name by registering the disputed domain name prior to Complainant’s trademark registration. Respondent argues that it has not used the <nol.com> domain name to prevent Complainant from reflecting its mark in a domain name.  Respondent alleges that it registered the <nol.com> domain name prior to Complainant’s trademark registration of its NOL mark.  Likewise, it claims it registered the domain name on March 14, 2009 and that Complainant applied for a trademark registration on June 24, 2009. 

 

Through its supplemental submission, Respondent states that its Exhibits are real and effective and none of them arte aimed to misleading the Panel. Moreover, it sets forth that the response to complaint was timely filed by virtual means.

 

Finally, Respondent contends that the dispute domain name comprised entirely of a common abbreviation that has many meanings apart from use in Complainant’s alleged mark.  Moreover, Respondent contends that the registration and use of a domain name comprising such a common abbreviation is not necessarily done in bad faith.

 

 

FINDINGS

 

Preliminary Issue: Deficient Response

 

The Respondent did not assent to participating in the proceeding under the new Rules by submitting Opt-In form prior to the Response deadline.  Therefore, Respondent was required to submit a hard copy of the Response prior to the Response deadline.  Respondent did not submit a hard copy of the Response prior to the Response deadline.  Although the National Arbitration Forum did not consider the Response to be in compliance with ICANN Rule 5, the Panel has decided to accept and consider this Response, due to the fact that the sole Panel is of the view that given the substantial nature of the dispute and the need to resolve the real conflict between the parties, this submission should be allowed and given due weight.[1] Particularly, the Panelist wants to underline that in order to have an adequate vision of the facts that gave grounds to the present case, it has determine to take into consideration the contentions and evidence filed by Respondent, in regard to the allegations filed by Complainant, when arriving to a decision in the present proceeding.

 

Moreover, the Panel considers important to highlight the fact that even though Respondent failed to provide a timely hardcopy response, it did file an online response addressed to the National Arbitration Forum, on March 21, 2010 which constitutes a formal compliance with the newest paperless UDRP provisions, for whose concept the Panel supports, in principle, the clear rule under which parties are required to submit electronic copies of the complaint/response and its annexes.

 

 

DISCUSSION

 

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

 

The first element of the paragraph 4 (a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant alleges that it holds trademark registrations with the Hong Kong trademark authority (Reg. No. 301,371,294 issued December 29, 2009) and with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 8,384,133 issued January 12, 2010) for its NOL mark.  Complainant asserts that it applied for these trademark registrations on June 24, 2009 and that the Domain Name is identical with and confusingly similar to the referenced trademark pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of generic or merely descriptive terms.[2] 

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

In fact, Complainant has provided evidence of a registration for the NOL mark, at least in Hong Kong and the European Union as well and as shown in Exhibit 2 of Complaint. The prior, gives Complainant legitimate right to file the complaint under examination.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive[3]. Complainant registration appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Respondent has the burden of refuting this assumption[4] and in this case, it also contends to have trademark rights enforceable in China, since at least 2009, leading the terms of Exhibits 12, 13 and 14 of the additional submission of the response.

 

Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademark, the sole panelist wants to point out that the addition of generic top-level domains (Gtld), i.e., .com, .biz, .edu, .org cannot be taken into consideration when studying if the registered domain name is confusingly similar to the registered trademark.

 

As it has been repeatedly accepted by UDRP Panels the existence of the “.com” generic to-level domain (gTLD), in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical or confusingly similar to the mark in which the Complainant asserts rights.

 

“ In the strictest sense, the domain name lumena.com is not identical to the trademark Lumena. The former includes a top level domain “.com” while the word Lumena stands alone in the latter. However, where the addition of it top-level domain appeared the domain name was the one that most closely described that nature of trademark (i.e.; “com” representing a commercial enterprise). The virtual identically seemed sufficient to satisfy the first element of paragraph 4 (a)(i) of the Policy” [5]

 

The Sole Panelist notes that the entirety of the mark NOL is included in the Respondent´s Domain Name <nol.com>. Therefore, the Domain Name is identical and confusingly similar to the NOL mark pursuant to the Policy paragraph 4(a)(i). Actually the addition of .com is not a distinguishing difference.[6]

 

Considering the pertaining evidence provided by Complainant under Exhibits 3 and 4 of the complaint, it is clear for the Panel that Respondent has failed to demonstrate a prior conferred lawful protection of its marks, taking into consideration that Complainant has been using the NOL marks since at least as early as 1968 and Complainant´s trademark rights in said mark extend throughout the world and not just in China.

 

Therefore the sole Panelist concludes that this evidence establishes Complainant’s rights in the NOL trademark for purposes of Policy ¶ 4(a)(i). This, in addition to the above, because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.

 

 

          Rights or Legitimate Interests

 

Paragraph 4 (c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’s rights or legitimate interest to the domain name:

 

(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; or

(ii) you (as an individual, business, or other organization) 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

 

Before shifting the burden to Respondent, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

The Complainant registration appears to be a prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated services.[7] It’s the Respondent who has the burden of refuting this assumption.

 

In this case, under the terms of Exhibit 6 of complaint, Complainant has proved that Respondent is not licensed or authorized to use Complainant’s NOL mark. Furthermore, the Panel has established that the pertaining WHOIS information identifies the domain name registrant as “cnwonder.com c/o Wu Guiqiang,” which Complainant, in its Additional Submission, contends is not similar to the <nol.com> domain name. 

 

Nevertheless, although Complainant did establish a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶  (a)(ii), the Panel considers that  the Respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name.

 

The Panel found that Complainant stressed that the marks registrations asserted by Respondent as Exhibits 10 and 11 of the response are not official documents and that the referenced applications could have been falsified. In support of these assertions, Complainant provides as Exhibit 7 of its Supplemental Filing, some evidence which is afterwards challenged by Respondent through its Supplemental Filing and by means of Exhibits 12 and 13. Taking into consideration this particular probatory confrontation, the Panel finds that for purposes of demonstrating whether any party has or has not legitimate interest in the domain in dispute, trademark certificates or trademark applications are not suitable but rather, the factual commercial focus of both Complainant and Respondent.

 

In that sense, considering that the Panel studied the trademark issue under the first chapter of this ruling, in this second scenario of the Policy the Panel has no choice but to leave aside said documents and continue his examination towards the real legitimacy each party claims to have.

 

Regardless of the aforementioned facts, the Panel wants to point out that he could establish that Respondent is indeed using the domain name including the important features NOL, taking into consideration the identical screen shots of the website at the domain name at issue, provided by both, Complainant and Respondent.

 

Regardless of the language in which the site is presented, it is clear to the Panelist that Respondent is indeed making a bona fide offering of goods or services on the website resolving from the <nol.com> domain name, as per it certainly provides a trading platform between domain name sellers and buyers.  Therefore, it is clear that Complainant failed to satisfy Policy ¶ 4(a)(ii) because the ex officio investigation undertook by the Panel and the Exhibits 4, 12 and 13 of Respondent’s additional submission, have convinced  the Panel that Respondent has been using the disputed domain name for a legitimate and standard business, pursuant to Policy ¶ 4(c)(i)).[8]

 

Even though it seems as if Respondent has established rights in the <nol.com> domain name by registering the disputed domain prior to Complainant’s trademark registration in China, this Panelist believes that the use and positioning of the NOL tradename since at least 1968 in which Complainant has focused its efforts, deserves protection and likewise constitutes a lawful-legitimate right upon the sole name.

 

 In that sense, Complainant has proved that its entitled to claim protection of its mark “NOL” and its tradename “NOL” before Respondent began to use the domain. However, Respondent is likewise free and allowed to claim protection upon the “NOL” domain name, as it is making a bona fide offering of services, certainly linked with the name used in the domain.

 

The foregoing implies a simultaneous legitimacy in connection to the expression NOL, which this Panel must refrain for domain name purposes and by no means extensive for trademark issues. In this particular case, the Panel considers that the expression NOL is an abbreviation that might be considered descriptive and the Respondent was merely quick enough to gain the name on a first come, first served basis when he registered it as a domain name, prior to Complainant. Although any number of organizations (including the Complainant) may have trade mark rights in such a word (and indeed the Respondent has produced evidence of numerous domains, marks and trade names which include or comprise the word "NOL" i.e; SOL SPAIN ONLINE, WORLD ONLINE, HAWAII ONLINE) that does not preclude the Respondent effecting registration of a common word on the "first come, first served" basis which was available. The Respondent’s reasons for doing so, namely that it was short, simple and easy to remember, provide an entirely reasonable and proper explanation for the Respondent’s choice of this word. It is of the essence to understand that the expression NOL constitutes a common abbreviation which has no apparent significance in any language.

 

Furthermore, even though the English language name of Respondent’s company is “Shenyang Name Online Tech Co. Ltd.” instead of “Shenyang Wonder Tech Co., Ltd.”, this situation does not indicate lack of legitimate interest in the disputed domain name, due to the above explained fact that Respondent is using the Shenyang Name Online Tech Co. Ltd. through the pertaining web site. This conclusion is reached even disregarding the assertion of Respondent who claimed that there are two methods to translate Chinese to English: Literal translation and paraphrase translation.

 

In view of the above, the Panel finds that Respondent’s domain name registration predates Complainant’s interests in the same domain and that Respondent has demonstrated legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).[9]

 

Registration and Use in Bad Faith

 

Complainant basically alleges that Respondent has acted in bad faith. According to paragraph 4 (b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

The Panel has concluded that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii) as per, neither substantial, nor circumstantial evidence is provided within the Exhibits, which could make the Panelist decide otherwise. As a matter of fact, the charges of bad faith are hold in nothing else but the statements enclosed along to the Complaint and the affidavits attached to the Additional Submission, as its unique evidence, within which Complainant focus its efforts towards emphasizing that the evidence of Respondent is false. Leading the uniform jurisprudence on this regard, the Panel considers that Complainant failed to establish that the Respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a Complainant to establish Policy ¶ 4(a)(iii)[10].

 

In this particular  case, the Panel found several but general allegations of bad faith without supporting facts or specific examples, which by no means supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith when registered the disputed domain, or  indicating that it has been acting in bad faith since then. Conclusively, the Panel wants to point out how this probatory deficiency constitutes a major technical - legal fault of the complaint.  

 

The Panel considers as reasonable the assertions of Respondent who contended that it has not used the <nol.com> domain name to prevent Complainant from reflecting its mark in a domain name.  In Respondent’s Additional Submission, Respondent contends that none of the domain names owned by Respondent (and mentioned by Complainant in support of its contentions), involve trademarks of other third-parties.  Respondent simply claims that the domain names were registered for Respondent’s business interests, which Respondent argues is not evidence of bad faith registration and use.  The Panel found that Respondent’s use of the disputed domain name is not equivalent to a bad faith registration and/or use under Policy ¶ 4(b)(ii), considering that the registration of the domain name appears to have been aimed at exploiting the ability of the word itself to attract Internet users, and not aimed at taking advantage of the Complainant’s reputation or trademark.

 

Besides, the Panel also considered in his analysis the fact that Respondent is using the name “NOL” in order to identify his web service port Names OnLine, which thus implies a true and demonstrable use of the domain. Bad faith is usually found in cases were Respondent can be easily identified as a cyber squatter, among several others of course. None of them is present in this case and the Panel is not allowed to assume any kind of conjectures.

 

In connection to the current use that Respondent gives to the domain, the Panel deems important to mention that the expression NOL is virtually suitable to indicate the commercial purpose of Respondent, when reflected through its Internet name Names OnLine.  

 

[Illustration omitted showing Respondent’s graphical mark incorporating the words Name OnLine]

 

Bearing in mind the above contrast, the Panel believes that contentions of Respondent are accurate in the sense of arguing that the dispute domain name comprised entirely of a common abbreviation that has many meanings apart from use in Complainant’s alleged mark.  Moreover, the Panelist considers that the registration and use of a domain name comprising such a common abbreviation is not necessarily done in bad faith.  If the Panel finds that a respondent is free to register a domain name consisting of a common abbreviation and that the domain name currently in dispute contains such common a common abbreviation, the Panel may then also find that Respondent did not register or use the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  In this regard, previous administrative Panels have concluded that: "Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."[11]

 

Finally and foremost,  the Panel must keep a logical link between its findings and thus, he has reach the conclusion that as per  Respondent has showed a legitimate interest in the <nol.com> domain name pursuant to Policy ¶ 4(a)(ii)[12], Respondent did not register or uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii), which naturally implies that the issue of bad faith registration and use was moot once the Panel found the respondent has legitimate interests in the disputed domain name.

 

Therefore, due to the study made by this Panel, it is considered that Complainant has failed to met the requirements of Paragraph 4 (b)v of the Policy, in demonstrating Respondent’s bad faith in the registration of the domain name in dispute.

 

DECISION

 

Complainant having failed to establish both, the second and third elements required under the ICANN Policy, the Panel orders that relief shall be DENIED. Accordingly, the complaint is hereby dismissed.

 

 

 

 

Fernando Triana, Esq. Panelist

Dated: April 14, 2010

 

 

 

National Arbitration Forum