China Daily News Group v. Rui Yang
Claim Number: FA0207000115042
PARTIES
Complainant
is China Daily News Group, Bejing,
CHINA (“Complainant”) represented by Joseph
Zhu. Respondent is Rui Yang, Ann Arbor, MI, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <chinadaily.com>,
registered with Network Solutions.
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.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 10, 2002; the Forum received a hard copy of the
Complaint on July 16, 2002.
On
July 12, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <chinadaily.com>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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
July 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 12,
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@chinadaily.com by e-mail.
A
timely Response was received and determined to be complete on August 12, 2002.
On September 9, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Clive Elliott
as Panelist.
The Panelist considered the papers. On September 20, 2002 he advised the
Forum that further information was required. He stated:
"An issue in this
case is whether the Respondent used/continues to use the domain name in good
faith. He indicates that he is prepared to provide the Panel with a password to
access his site. The Panel is of the view that such access is necessary in
order to reach a proper decision. Accordingly, it is ordered that the
Respondent provide within 5 days from the date of this order a password to his
web site or alternatively full information on the content and provenance of his
web site."
A password was provided to the Panelist on September 25,
2002. A decision issued on the same day.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
claims to operate the first and only national English language newspaper in
China. Complainant founded the China Daily in 1981 and has developed
the English newspaper service into a group of nine publications, including China Daily, China Daily Hong Kong edition, Reports
from China, Business Weekly, Beijing Weekend, Shanghai Star and the China Daily website. Complainant claims that China Daily is China’s most frequently quoted newspaper, with its
stories often picked up by international wire services, newspapers, magazines
and radio and television stations.
Complainant also argues that China
Daily is recognized as China’s most authoritative English publication.
Since
1983, Complainant’s North American Distribution Group has used CHINA DAILY
throughout the United States and Canada.
Complainant was granted a trademark for the CHINA DAILY mark in 2000 by
the U.S. Patent and Trademark Office (USPTO), registered with date of first use
marked as June 1983.
Complainant
claims that the <chinadaily.com>
domain name is identical to its CHINA DAILY mark. It asserts that the <chinadaily.com>
domain name was registered in 1998 and has never been actively used in
association with a website.
Accordingly, it argues that passive holding of the domain name for four
years does not represent a bona fide offering of goods or services, nor does it
constitute fair use.
Complainant
claims that Respondent has no connection with Complainant’s CHINA DAILY mark or
China Daily publication. It argues that Respondent was in no way
authorized to use the CHINA DAILY mark in connection with anything, let alone
incorporate it in a domain name.
Finally, Complainant maintains that Respondent is not commonly known by
the <chinadaily.com> domain
name.
B.
Respondent
Respondent
claims that he registered the <chinadaily.com>
domain name before the USPTO granted trademark status to Complainant for the
CHINA DAILY mark. Respondent asserts
that “this fact gives Respondent common law right to continue to own and use
the domain name after the trademark is granted to the Complainant.”
Furthermore,
Respondent argues that he has the right to use the word “China” since
Respondent is “ethically Chinese” combined with the common word “Daily.” He also asserts that the CHINA DAILY mark is
not distinctive.
Respondent
asserts that Complainant registered the <chinadaily.com.cn> domain name
in 1995. Respondent then argues that
Complainant was not truthful in its Complaint when Complainant claimed to have
registered <chinadaily.com.cn> because Respondent had already registered <chinadaily.com>.
Respondent claims
to have made active use of the <chinadaily.com>
domain name. He says that he operated a
website at no cost to its users, located at <chinadaily.com>, prior to initiation of this lawsuit. Respondent claims that his website contains
information about the stock market, which he has analyzed along with a
friend. He indicates that he values
stock market information on his website and requires a password in order to
access said information. However,
Respondent claims that he does not charge a fee for the information
provided. Since Respondent’s domain
name points to a password protected website, he argues that he has not
passively held the domain name for four years as alleged. Thus, Respondent maintains that he uses the
domain name in connection with a bona fide offering of services.
Based on the
Panelist’s viewing of the site, it is apparent that Respondent’s website
contains a series of reports under the headings:
“Thoughts on
General Market” and “Trading Ideas”. The first report under “Thoughts on
General Market” is dated and headed as follows:
“January 16, 2002
1. Market Update
2. News
3. Fundamental Analysis
4. Technical Analysis
5. Summary”
Under the head “Technical Analysis” are
various charts depicting performance of the markets under discussion.
Subsequent reports are in much the same
vein.
Respondent argues that he actively used
the subject domain name for his password sensitive website and that Complainant
initiated the bargaining process by offering $100,000 for registration rights
in the domain name. Respondent
maintains that Complainant’s employee contacted and notified him that
Complainant was interested in buying the rights to the domain name for
$100,000. His reply was reported as
accurate by Complainant and Respondent maintains that he put too much work into
the website development to sell rights in the domain name, especially for
Complainant’s asking price.
Pursuant
to paragraph 4(a) of the Policy it is found that:
(1)
the domain name <chinadaily.com> is identical or confusingly similar to the CHINA DAILY trade/service
mark;
(2)
the Respondent has a right or legitimate interests in
respect of the <chinadaily.com> domain name; and
(3) the <chinadaily.com> domain
name is not being used in bad faith.
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
Complainant
operates the first and only national English language newspaper in China. Complainant founded the China Daily
in 1981 and has developed the English newspaper service into a group of nine
publications, including China Daily, China Daily Hong Kong
edition, Reports from China, Business Weekly, Beijing Weekend,
Shanghai Star and the China Daily website. Complainant claims that China Daily
is China’s most frequently quoted newspaper, with its stories often picked up
by international wire services, newspapers, magazines and radio and television
stations. Complainant also argues that China
Daily is recognized as China’s most authoritative English publication.
Since
1983, Complainant’s North American Distribution Group has used CHINA DAILY
throughout the United States and Canada.
Complainant was granted a trademark for the CHINA DAILY mark in 2000 by
the U.S. Patent and Trademark Office (USPTO), registered with date of first use
marked as June 1983.
The
Panel may find that Complainant’s extensive use of the CHINA DAILY mark in
international commerce for nearly twenty years is sufficient to establish
common law rights in the CHINA DAILY mark by the time Respondent registered the
<chinadaily.com> domain name in 1998. Respondent in turn argues that the CHINA DAILY mark is not
distinctive. This is not accepted by
the Panel.
Respondent
claims that it registered the <chinadaily.com> domain name before
the USPTO granted trademark status to Complainant for the CHINA DAILY mark. For
the reasons identified above, this is not determinative
Complainant
asserts that the <chinadaily.com> domain name is identical to its
CHINA DAILY mark. This contention clearly has merit. If it is not identical it
is certainly confusingly similar. Likewise, the counter arguments raised by
Respondent do not seem to be relevant to this particular ground.
Accordingly,
it is found that the ground is made out.
Rights or Legitimate Interests
Respondent claims to have developed an active use of the
<chinadaily.com> domain name.
Respondent maintains that, contrary to the allegation that it passively
held the domain name and did not provide a bona fide offering of goods or services,
it did just that. It asserts that it operated a website at no cost to its
users, located at <chinadaily.com>, prior to initiation of this
dispute.
As
indicated above, Respondent also argues that it has the right to use the word
“China” since Respondent is “ethically Chinese” combined with the common word
“Daily.”
Respondent claims
that its website contains information about the stock market. Since
Respondent’s domain name points to a password protected website, Respondent
argues that it has not passively held the domain name for four years. Thus, Respondent maintains that it uses the
domain name in connection with a bona fide offering of services pursuant to
Policy ¶ 4(c)(i). See 3Z
Prod. v. Globaldomain,
FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a
domain name is shown by website development); see also Sweeps Vacuum & Repair Ctr., Inc. v.
Nett Corp., D2001-0031 (WIPO Apr. 13, 2001) (finding bona fide use of a
generic domain name, <sweeps.com>, where Respondent used a legitimate
locator service (goto.com) in connection with the domain name).
Having had the opportunity to view the
website, the Panel is of the view that it represents, at least prima facie,
a legitimate offering of services (namely stock exchange advice) albeit for no
charge. It represents use of a website with reasonably regular stock market
updates which seems, on the face of it, to be provided in a bona fide way to
members of the public, notwithstanding that the group may be relatively small
and the site password protected.
Having reached this view it seems that
Respondent is able to rely on paragraphs 4(c)(i) and (iii) of the UDRP Policy,
namely, before notice of the dispute he took steps to use the domain name in
connection with a bona fide offering of services and has made legitimate
non-commercial use of the domain name.
If Respondent’s use of the domain name
commenced after The Complaint from Complainant the Panel would have not
necessarily reached the same conclusion. However, under the present circumstances
the Panelist is prepared to give Respondent the benefit of the doubt, as the
Policy seems to contemplate he may or indeed should.
Accordingly, Complainant fails to make
out this ground.
Registration and Use in Bad Faith
Respondent
argues that it actively used the subject domain name for its password sensitive
website and that Complainant initiated the bargaining process by offering
$100,000 for registration rights in the domain name. Respondent maintains that Complainant’s employee contacted and
notified Respondent that Complainant was interested in buying the rights to the
domain name for $100,000. Respondent’s
reply was reported as accurate by Complainant and Respondent maintains that it
put too much work into the website development to sell rights in the domain
name, especially for Complainant’s asking price. See Open Sys.
Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that
Respondent was not acting in bad faith by discussing a sale when Complainant
initiated an offer to purchase it from Respondent); see also Gen. Mach. Prod. Co. v. Prime Domains,
FA 92531 (Nat. Arb. Forum Mar. 16, 2000) (finding it significant that
Complainant, and not Respondent had initiated contact, inquiring about
purchasing the domain name <craftwork.com>, and that this fact tended to
weigh against a finding of bad faith.
Given
the findings in relation to bona fide interest and offering of services, the
Panelist finds that the domain name has, at least on the face of it, been used
in good faith. Obviously, such a finding is of a provisional nature, given the
procedure and limited scope under which the enquiry is made. It is however
sufficient to dispose of this ground for present purposes.
Accordingly,
Complainant has failed to establish this ground.
DECISION
In view of the above the
Complaint is dismissed.
Clive Elliott, Panelist
Dated: September 25, 2002
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