China Arche Group;Chaoyang Baolansi Meticulous Chemical Co. Ltd. v. Okumura Kenji
Claim Number: FA0112000103447
The Complainant is China Arche Group; Chaoyang Baolansi Meticulous Chemical Co. Ltd., Guangdong, CHINA (“Complainant”) represented by George Hoo, of Beijing Chaoyang Law Firm. The Respondent is Okmura Kenji, Nagoya, Aichi, JAPAN (“Respondent”) represented by Ari Goldberger, of ESQWIRE.COM LAW FIRM.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arche.com>, registered with Register.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.
Edmund P. Karem is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 28, 2001; the Forum received a hard copy of the Complaint on January 17, 2002.
On December 28, 2001, Register.com confirmed by e-mail to the Forum that the domain name <arche.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 January 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 11, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 21, 2002.
On February 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edmund P. Karem as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant contends that it has rights in the name ARCHE due to the registration of the mark in over 100 countries, including registration for the ARCHE trademark in Japan, (Reg. No. 4,206,902) on October 3, 1998. Complainant asserts that there were two Chinese registrations of ARCHE (Reg. No. 561742 and Reg. No. 1086703) in relation to certain soap and cosmetic products on August 20, 1991 and August 28, 1997.
Complainant contends that the mark it has so registered is identical to the disputed domain name registered by the Respondent.
Complainant further contends that Respondent signed a “letter of guarantee” which stated that he would only sell the disputed domain name to the Complainant. It is Complainant’s position that this is an indication Respondent registered the domain name for the primary purpose of marketing it to the Complainant and thus it can be determined pursuant to ICANN Policy 4(a)(ii) that Respondent has no rights or legitimate interests in the disputed domain name. As proof of this assertion, Complainant points to Respondent’s “letter of guarantee” claiming it contains an admission Respondent “never owned any personal or business identity (including trademarks, company or organization legal name, etc.) Containing the word “arche” in real world (including in Japan) before Oct 31, 2001”.
It’s final assertion with regard to Respondent’s rights or legitimate interest is that Respondent never made any actual use of <arche.com>.
Complainant further contends that the domain name was registered and used in bad faith because it was registered for the sole purpose of offering it for sale to Complainant. Complainant states that Respondent has admitted to actual knowledge of Complainant’s right to the ARCHE mark in its “letter of guarantee” and thus his registration and use of the disputed domain name was in bad faith.
Additionally it is contended that the failure to use the disputed domain name for any purpose is evidence of bad faith in registration.
Respondent does not deny that Complainant’s mark and the disputed domain name are identical however Respondent asserts that Complainant does not have exclusive rights to ARCHE because it is a common generic term.
Respondent asserts a legitimate interest in the domain name because it developed a website for purposes of promoting interest in the sport of archery and utilized this domain name only because <archery.com> was unavailable. Respondent states that it had an operational website until December of 2000 at which time it went down due to a termination of service of the host server.
Respondent also contends that it has legitimate interest in the domain name because the name merely incorporates a generic term, ARCHE.
Respondent denies he had actual knowledge of Complainant’s rights in the ARCHE mark at the time it was registered. Respondent asserts that the Panel should disregard any statements in the Complainant’s “letter of guarantee” because the Respondent did not understand the contents of the document, which was drafted entirely by Complainant. It is Respondent’s contention that he understood it to be a formality necessary to engage in negotiations with Complainant regarding the price and that such negotiations were initiated by the Complainant. Respondent also asserts that in the five years during which the domain name was registered, and prior to Complainant’s contact regarding sale of the domain name Respondent had never attempted to sell the disputed domain name to any person or entity. This is evidence, Respondent states, that its primary purpose was not to offer this domain name for sale to the Complainant.
Further Respondent asserts that Complainant is engaging in reverse domain name hijacking by virtue of initiating negotiations to purchase the disputed domain name and when Respondent turned down the price Complainant asked, the Complainant turned around to argue that Respondent had registered the domain name with the primary intent to sell it to Complainant.
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 does not deny that Complainant’s mark and the registered domain name are identical. Nor does Respondent deny that Complainant holds a trademark for ARCHE. It is Respondent’s assertion that ARCHE is a common generic word and thus Complainant does not have exclusive rights. The Panel does not accept the contention that because ARCHE in French means “Arch” or “Ark” it is a common generic term. In English the word Arche is a combining form meaning; prior, original, first. Whether the word exists in other languages or not is unknown to the Panel but the Panel concludes it is not a generic term to which Complainant cannot maintain exclusive rights.
Rights or Legitimate Interests
It is Respondent’s contention that it has rights and legitimate interests in the domain name because it developed a website located at the disputed domain name. This assertion is born out by the evidence. Respondent wanted a website related to archery and chose <arche.com> because <archery.com> had already been registered. Following the registration of the domain name on August 8, 1996 and continuing to December 2000 the Respondent maintained an <arche.com> website on which archery related photographs and information about famous archers was posted. In December 2000 the <arche.com> website went down due to a discontinuation of the host server. Respondent has future plans for a website devoted to discussion of archery participates and for use in organizing seniors archery tournaments.
3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) found a legitimate interest in a domain name by website development. See also Newport News v. VCV Internet, AF-0238 (eResolution July 18, 2000) which found that Respondent had rights and legitimate interests in the domain name <newportnews.com> where the domain name was used in connection with disseminating general information about the city of Newport News. The fact that the website was operational until December 2000 refutes the contention of the Complainant that Respondent’s website was “empty”.
In addition Respondent has contended that because the website was not being used for commercial gain he has legitimate interests and rights in the name. Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) found that Respondent had rights in the domain name <missionsuccess.net> where she was using the domain name in connection with a noncommercial purpose. The use of the domain name both in the past and that planned in the future is a noncommercial use by Respondent.
Registration and Use in Bad Faith
When the Respondent registered the domain name he was unaware of Complainant’s trademark. There is no evidence that the domain name was registered for the purpose of selling it to the Complainant because a five year period went by during which there was no discussion of a sale between Complainant and Respondent. The initial contact regarding sale of the domain name was by the Complainant and the email correspondence between the parties supports Respondent’s contention that Respondent’s negotiations for the sale of the domain name were in response to Complainant’s initial contact. While the selling price asked was greater than Respondent’s out of pocket expenses, it was not bad faith on the part of Respondent to attempt to negotiate a higher price for the domain name when the initial offer came from the Complainant. See Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001). In that case there was a refusal to find bad faith simply because the Complainant offered the Respondent far more than the Respondent paid for the disputed domain name and the Respondent requested an even larger sum. In addition see Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) which found that Respondent was not acting in bad faith by discussing a sale when Complainant initiated an offer to purchase from Respondent. In accordance with that decision was Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000). The evidence also makes clear that there was no attempt to sell the domain name during the five years prior to Complainant’s contact of Respondent regarding a sale.
Respondent did sign a “letter of guarantee”, however, at the time he did so he did not have a good command of the English language and was of the belief that he was signing a form necessary to proceed with negotiations on the sale of the domain name to Complainant.
ICANN Rule 15(e) provides that, “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceedings”. The Panel so finds in this case. The evidence that compelled the Panel to that decision is the record of the email negotiations between the parties which preceded the filing of the Complaint. The submitted material, including the email negotiations, makes clear that although the Complainant increased the price it was willing to pay for the domain name on at least two occasions or, suggested that an increase in price was possible, the Respondent did not come off its asking price and it was only after the negotiations concluded and Complainant had been unable to strike a bargain that the Complaint was initiated. It is clear from the correspondence that the parties were negotiating for a price well in excess of Respondent’s out of pocket expense.
The Panel finds:
(1) That the domain name is identical and/or confusingly similar to a name in which the Complainant has trademark rights;
(2) Complainant has failed to establish that Respondent has no right or legitimate interest in the domain name; and
(3) Complainant has failed to show that the domain name was either registered or used by Respondent in bad faith
(4) The complaint was brought in bad faith and constitutes an abuse of the
Based on the foregoing findings and discussion, Complainant’s request for transfer of <arche.com> is hereby denied.
Edmund P. Karem, Panelist
Date: March 13, 2002
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