China Arche
Group;Chaoyang Baolansi Meticulous Chemical Co. Ltd. v. Okumura Kenji
Claim Number: FA0112000103447
PARTIES
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.
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.
Edmund
P. Karem is the Panelist.
PROCEDURAL HISTORY
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 postmaster@arche.com 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.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
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.
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
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.
FINDINGS
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
administrative
proceedings.
DECISION
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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