Gibson Brands, Inc. v. zong wen / shen zhen shi kai di xin shi ye you xian gong si
Claim Number: FA1501001602037
Complainant is Gibson Brands, Inc. (“Complainant”), represented by Johnathan Bates of Bates & Bates, LLC, Georgia, USA. Respondent is zong wen / shen zhen shi kai di xin shi ye you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epiphoneamps.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2015; the Forum received payment on January 27, 2015. The Complaint was submitted in both English and Chinese.
On February 1, 2015, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <epiphoneamps.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 February 6, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2015 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 firstname.lastname@example.org. Also on February 6, 2015, 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 February 21, 2015. The Response was submitted in English (with English and Chinese language annexes).
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant manufactures and sells electric guitars, basses and mandolins, and amplifiers for electric guitars, under the word and stylized trademark EPIPHONE (the “Trademark”). Complainant is the owner of registrations in numerous jurisdictions worldwide for the Trademark, in class 15, for stringed musical instruments, and in Class 9, for electronic amplifiers. The Trademark has been used on amplifiers since 1939.
Complainant is the owner of two registrations for the Trademark in China, both in Class 15 in respect of stringed musical instruments. The first registration, for the word mark, is registered with a priority date of January 14, 2006. The second registration, for the stylized mark, is registered with a priority date of 28 June 2014.
Complainant commenced operating its website under the domain name <epiphone.com> in August 1995.
The domain name is identical or confusingly similar to the Trademark. It simply adds one of Complainant’s products (“amps”) to the Trademark.
Respondent began operating its website at the domain name (the “Website”) on November 7, 2014, offering for sale and promoting electronic amplifiers under and by reference to the stylized version of the Trademark.
Respondent is not using the domain name in connection with any bona fide offering of goods or services, and has not been engaged in any legitimate noncommercial or fair use of the domain name. Respondent has not been authorized or licensed by Complainant to use the Trademark.
Respondent is using the domain name in bad faith in order to intentionally attract, for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Trademark, as to the source, sponsorship, affiliation or endorsement of the Website.
Respondent has obtained registration of the stylized version of the Trademark in China in class 9 in respect of electronic products, including amplifiers, with a priority date of June 14, 2009.
Complainant’s registrations for the Trademark in China are in respect of musical instruments, in class 15.
Respondent claims to have first registered the domain name on June 17, 2009.
The goods produced by Respondent and displayed on the Website, namely electronic amplifiers, are different from the musical instruments produced by Complainant.
Complainant has failed to establish all the elements entitling it to transfer of the domain name.
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.
The Panel finds that Complainant has rights in the Trademark acquired through registration and use which predate the date of registration of the domain name by many decades.
The domain name comprises the Trademark in its entirety, together with the word “amps”, which is directly descriptive of the goods produced by Complainant, and does not serve to distinguish the domain name from the Trademark in any significant way.
The Panel therefore finds that the domain name is confusingly similar to the Trademark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Respondent has submitted evidence of its valid and subsisting registration in China for the stylized version of the Trademark, registered in class 9 in respect of electronic goods, including electronic amplifiers, since June 14, 2009.
Respondent also claims to have registered the domain name on June 17, 2009 (although the evidence in this regard is inconclusive and the Panel is unable to determine whether the domain name was first registered on this date).
The Website is an English language website that promotes and offers for sale electronic amplifiers. It does not promote or offer for sale musical instruments. Although there is a somewhat obscure posting on the Website apparently dated October 18, 2009 entitled “2009 MUSIC CHINA”, it is apparent from the content of the Website that it is not targeting businesses or consumers in China, but is apparently seeking potential business partners or customers elsewhere. For example, the home page on the Website contains the following statement:
“EPIPHONE AMPLIFICATION COLLECT PRODUCTION AGENT ALL OVER THE WORLD. THE STRENGTH DISTRIBUTION IN YOUR COUNTRY ARE WELCOME.”
The Panel has no doubt that, if the Website is targeting businesses and customers in countries in which Complainant has valid and subsisting registrations for the Trademark in Class 9 in respect of amplifiers (including the USA), then Complainant would likely have strong grounds for taking action against Respondent in such jurisdictions.
Respondent has not adduced any evidence of its use of the stylized version of the Trademark in China, consonant with its registration for the said mark in Class 9 in China (for example, use of the mark in relation to a Chinese language website targeting consumers in China, or evidence of promotion and sale of Respondent’s amplifiers under and by reference to the said mark in China).
Respondent has however adduced evidence of its valid and subsisting registration for the stylized Trademark in China in Class 9. The Panel therefore finds that Respondent has rights in respect of the domain name and concludes Complainant has failed to fulfill the second condition of paragraph 4(a) of the Policy.
In light of its finding in respective of the second limb under paragraph 4(a) of the Policy, it is not necessary for the Panel to make a determination as to whether the domain name has been registered and used in bad faith.
Reverse Domain Name Hijacking
Reverse Domain Name Hijacking is defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain name holder of a domain name".
Paragraph 15(e) of the Rules 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… the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".
In the present proceedings, Complainant relies upon its registrations for the word and stylized versions of the Trademark in numerous jurisdictions worldwide, including in no less than 14 jurisdictions (the USA, Europe, Australia, Denmark, Finland, Greece, India, Japan, New Zealand, Russia, South Korea, Sweden, Taiwan Province of China and Vietnam) in which the Trade Mark has been registered in both Class 15, in respect of musical instruments, and also in Class 9, in respect of amplifiers.
In light of the long history and use of the Trademark by Complainant, and its longstanding maintenance of a worldwide portfolio of registrations for the Trademark in both Class 15 and Class 9, the Panel considers it is inconceivable that Complainant was not aware of Respondent’s registration since June 14, 2009 of the stylized version of the Trademark in China in Class 9, in particular in circumstances where Complainant has registered both the word and stylized versions of the Trademark in China in Class 15, with priority dates of January 14, 2006 and 28 June 2014, respectfully.
It is not unreasonable to assume that the existence of Respondent’s trademark registration must have come to the attention of Complainant prior to the filing of the Complaint herein by virtue of Complainant maintaining a worldwide trademark watching service. The Panel also considers it is unlikely that the existence of the Respondent’s registration did not come to light prior to or during prosecution of Complainant’s application for registration of the stylized version of the Trademark in China in Class 15 in 2014 – either under an availability search conducted by Complainant’s Chinese trademark attorneys, or otherwise by way of citation during the examination process.
Even if the above assumptions are incorrect, the Panel considers it was incumbent upon Complainant to conduct the necessary searches to determine whether in fact Respondent did possess trademark rights in China in Class 9 in respect of amplifiers, in circumstances where, for whatever (unexplained) reason, Complainant had not itself obtained registration of the Trademark in Class 9 in China, having obtained such registrations in no less than 14 other jurisdictions.
It is also noteworthy that Complainant’s website at its domain <ephiphone.com> promotes and offers for sale an impressive array of acoustic and electric guitars and other stringed instruments and accessories, but only one amplifier product (under the heading “Amplifiers”) – described as a “75th Anniversary Century Amplifier”. It would appear therefore that, at present, Complainant’s main use of the Trademark is in respect of stringed musical instruments, and that its current use of the Trademark in relation to amplifiers is limited.
In all the circumstances, the Panel makes a finding of Reverse Domain Name Hijacking against Complainant.
The Panel would however stress that this finding has been made for the purposes of and under the Policy only, and is without prejudice to any rights Complainant may wish to assert against Respondent in any court of competent jurisdiction in respect of Complainant’s relevant national trademark rights.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <epiphoneamps.com> domain name REMAIN WITH Respondent.
Sebastian M W Hughes, Panelist
Dated: March 9, 2015
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