Qianan JiuLongQuan Mineral Water Co., Ltd. v. NA / Naofumi Yamaguchi
Claim Number: FA1303001488332
Complainant is Qianan JiuLongQuan Mineral Water Co., Ltd. (“Complainant”), represented by Wang Fang of Dnbiz Limited, China. Respondent is NA / Naofumi Yamaguchi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yuming.com>, registered with ENOM, INC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 4, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <yuming.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@yuming.com. Also on March 5, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on March 21, 2013.
On March 26, 2013, the Forum received Complainant’s timely Additional Submission. On March 27, 2013, Respondent was sent a copy of Complainant’s Additional Submission.
On March 28, 2013, the Forum received Respondent’s timely Additional Submission. The Forum sent a copy of Respondent’s Additional Submission to Complainant on March 28, 2013.
On April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in YUMING and alleges that the disputed domain name is identical or confusingly similar to its trademark. Complainant submits that although there are graphical and Chinese characters in Complainant’s trademark, these could not be used in a domain name and the term YUMING is the transliteration of the Chinese characters in the mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies all of Complainant’s allegations.
So far as the alleged trademark rights are concerned, Respondent submits that a third party is the owner of Reg. No. 1,605,646 at the Japanese Patent Office registered July 28, 1983 for the same trademark. Respondent further submits that “Yuming” is a well known female first name in Japan and China and that, additionally, it means an “idler” in Japanese.
Respondent claims that it had used the domain name in 2008-09 to promote concerts and has more recently attempted to establish an e-mail address using the domain name.
C. Additional Submissions
As indicated above, both parties made additional submissions.
Complainant’s additional submissions of relevance are that (i) registration of the trademark in other countries does not show that Respondent has any rights in this trademark; (ii) further enquiries show that the domain name has been used since 2009; (iii) Respondent has two active e-mail addresses which it is presently using and is not using the domain name for e-mail as Respondent claims; and (iv) any use of the domain name in 2008-09 was sporadic and rudimentary and made only for the purpose of feigning a legitimate interest in the domain name.
Respondent’s additional submissions of relevance are that (i) Respondent submitted a trademark application for YUMING.COM on July 2, 1997, (ii) thirteen years later Complainant has not yet published any official website, and Respondent has never been contacted by Complainant prior to this dispute, and (iii) Respondent accuses Complainant of reverse domain name hijacking in so far as it claims that Complainant’s sole purpose in bringing these proceedings is to resell the domain name.
The undisputed factual findings pertinent to the decision in this case are that:
1. Complainant owns Chinese State Administration for Commerce and Industry trademark registration no. 1,211,585 for YUMING & Figurative elements registered on September 28, 2008 (Panel notes in this respect that Complainant has provided a Chinese language copy of a transfer of ownership certificate and not the original certificate of ownership however since the matter was not contested it is been taken as proof of ownership)
2. The disputed domain name was registered on November 10, 1999.
3. The domain name was not in use at the time of filing of the Complaint.
4. There is no commercial or other agreement between the parties.
5. Complainant is a Chinese company. It asserts that it has used the trademark YUMING for 15 years in relation to the sale of fruit juices, mineral waters, and other non-alcoholic drinks.
6. Nowhere in the evidence is there any proof of use of the trademark or proof of sale of the aforementioned goods.
7. Yuming is a known girl’s (or boy’s) given name in China and Japan. Whether it has an ordinary dictionary meaning in Japanese is alleged but not proven.
8. The July 1983 registration of a stylized version of the trademark at the Japanese Patent Office does not assist Respondent. There is no translation from Japanese, no proof of its currency, no indication (in English) of the owner. Its existence is in any event essentially irrelevant to these proceedings.
9. The evidence provided by Respondent via the Wayback Machine is inconclusive and, again, is in Japanese with no translation. It appears to be a screenshot from some time in 2011 referencing a concert which had taken place in 2008-09. Even without an English translation, Panel can see that it is an undeveloped webpage. This evidence does not assist Respondent.
10. Respondent alleges that it filed a trademark application for YUMING.COM on July 2, 1997 but there is no evidence of that filing.
11. Respondent submits that it does not sell water. It alleges that a third party sells water by reference to the trademark and so argues that if Respondent infringes, so do those that third party. That submission is irrelevant for the purposes of administration of the Policy.
12. There is no evidence that Respondent has ever attempted to sell the domain name to Complainant, Complainant’s predecessor in business, or to any third party.
13. There is no evidence that Respondent has any history of abusing trademark rights.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Panel notes that Complainant makes no specific claims that any one or more of those listed scenarios might apply and on the available evidence Panel sees no application of those scenarios to the facts.
What remains is to assess whether, in the absence of specific claims, there is evidence that the disputed domain name was both registered in bad faith and later used in bad faith. Panel finds that in this case the determinative question is whether it could be said that the domain name was registered in bad faith in November 1999. Panel notes that this date not only predates the 2008 registration date of Complainant’s trademark but also predates the filing date of the application for registration of the trademark. Although Complainant asserts that it has used the trademark for 15 years there is no evidence of that claim and indeed no evidence at all of use of the trademark. On these facts alone, Panel is prepared to find that that there is no evidence of bad faith registration. See, by way of example, Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb.Forum May 16, 2007), determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the trademark. Additionally, although the evidence of both parties is lacking in many respects, Panel has accepted the evidence that Yuming is a known forename and so raises doubt that Respondent set out to target Complainant’s trademark.
Panel finds that Complainant has failed to establish bad faith registration and so has not established this leg of the Policy.
In view of that finding, it is not necessary for Panel to fully consider Respondent’s submission that the domain name has been registered for 13 years without objection from Complainant, but if the outcome had hinged only on this point then Panel would have been prepared on the facts to seriously consider that laches was a bar to the Complaint.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <yuming.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: April 16, 2013
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