Graman USA Inc. v. Shenzhen Graman
Industrial Co.
Claim Number: FA0211000133676
PARTIES
Complainant
is Graman USA Inc., Rancho Santa
Margarita, CA, USA (“Complainant”) represented by David Podrug, of
Graman USA Inc. Respondent is Shenzhen Graman Industrial Co.,
Shenzhen, Guangdong, CHINA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <graman.com>,
registered with Network Solutions, Inc.
PANEL
On January 2, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed James P. Buchele
as Panelist. 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 14, 2002; the Forum received a hard copy of the
Complaint on November 18, 2002.
On
November 20, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <graman.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
November 26, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 16, 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@graman.com by e-mail.
Respondent
made a response by e-mail that was received on December 6, 2002.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
1.
Complainant
contends that <graman.com> is identical to the name of its company
Graman USA Inc., as well as its trademark registration GRAMAN.
2.
Graman is
not a word in the English language.
Graman is a made up name from the words “GRAphite” and
“MANufacturing.” Complainant claims to
have created this acronym to specifically create a unique identity.
3.
Graman USA
Inc. is commonly referred to as “Graman” by its vendors, customers and their
customers.
4.
Graman USA
Inc. has spent millions of U.S. dollars promoting the name “Graman.” “Graman”
appears on nearly every product Complainant manufactures and/or promotes.
“Graman,” as far as Complainant knows, is not a word in Mandarin or Cantonese.
Complainant asserts that the name has been “kidnapped” for the purpose of
intercepting business inquiries intended for Graman USA Inc.
5.
Respondent
has registered <graman.com> soon after Complainant made an inquiry
to a broker in Respondent’s area for a quote to manufacture certain Graman
products.
Respondent
Respondent
claims that when it registered the domain name it was not aware of
Complainant’s company. That it has made
extensive use and investment in the name by advertising on the Internet and in
magazines and that they are a “famous company” in Shenzhen, China.
Rule 3 of the
UDRP specifically lays out the requirements that must be a part of a complaint
initiated for these proceedings. Specifically Rule 3(b)(ix) states the
following:
Describe,
in accordance with the Policy, the grounds on which the complaint is made
including, in particular,
(1) the manner in which the domain name(s)
is/are identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and
(2) why the Respondent (domain-name holder)
should be considered as having no rights or legitimate interests in respect of
the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be
considered as having been registered and being used in bad faith
The
Complaint is detrimentally brief and unspecific, and consequently appears to
violate UDRP Rule 3. Complainant has not provided a prima facie case and
although Respondent’s response to the Complaint is inadequate, Complainant must
still meet the required burden to establish its case. See TotalFinaElf
E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002)
(finding that in order to bring a claim under the Policy, Complainant must
first establish a prima facie case).
The lack of evidence has typically not been grounds to grant
Complainant a favorable decision if it has failed to carry its burden of proof.
See Gassan Diamonds B.V. v.
Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (denying claim despite
Respondent’s lack of evidence because Complainant failed to carry its burden of
proof); see also Lush LTD v.
Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when
Respondent does not file a Response, Complainant must allege facts, which if
true, would establish that Respondent does not have any rights or legitimate
interests in the disputed domain name).
Respondent did not submit a formal Response in this proceeding, only an
e-mail message that did not conform to UDRP Rule 5, which governs, inter alia, the method and content of a Response in
this proceeding. Rule 5(b)(i) expressly states:
The Response shall be submitted in hard copy and in electronic form and shall:
(i)
Respond
specifically
to the statements and allegations contained in the complaint and include any
and all bases for the Respondent (domain-name holder) to retain registration
and use of the disputed domain name; (internal parenthetical omitted)
When, under Rule 14(b) a party does not comply with any provision or
requirement under these Rules, or any request from the Panel, then “the Panel
shall draw such inferences therefrom as it considers appropriate.” When some form of communication has occurred,
although outside the scope of the Rules, some significance is usually drawn
therefrom. See Strum v.
Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that
"[r]uling a Response inadmissible because of formal deficiencies would be
an extreme remedy not consistent with the basic principles of due
process").
Even if this case were to be
treated as a default, Complainant must still prove a prima facie case. See VeriSign Inc.
v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default does not
automatically lead to a ruling for 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 or Confusingly
Similar
Complainant’s
mark is registered, as of July 1996, on the Principal Register of the United States
Patent and Trademark Office (“USPTO”) (Reg. No. 1,988,559). Complainant uses
this mark in conjunction with the production of golfing equipment. Complainant
asserts that the name is completely unique and is comprised from the words
“GRAphite and MANufacturing”, thereby creating the GRAMAN mark.
Complainant
alleges that Respondent’s <graman.com> domain name is
identical to its registered GRAMAN mark because it includes the entire mark of
Complainant with no distinctive modification or alteration. A domain name that
is exactly the same, regardless of the general top-level domain, such as
“.com,” is said to be identical under Policy ¶ 4(a)(i). See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding
that the domain name <nike.net> is identical to Complainant’s famous NIKE
mark); see also Am. Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23,
2000) (finding that the domain name <americangolf.net> is identical and
confusingly similar to Complainant’s AMERICAN GOLF marks).
Complaint
prevails on the issue regarding the identical nature of the disputed domain
name.
Rights and Legitimate
Interests
Complainant must make a showing that Respondent has no
rights or legitimate interests in the domain name. Complainant argues that they
have rights and legitimate interests in the name via registration with the
USTPO and subsequent use of the GRAMAN mark. In order to prove a prima facie
case, Complainant must factually assert under Policy paragraph 4(c) that:
1.
Respondent is not using, nor has prepared to, use the domain name in
connection with a bona fide offering of goods and services; and
2.
Respondent is not commonly known by the domain name; and
3.
Respondent is not using the disputed domain name for a legitimate
noncommercial or fair use.
Complainant makes no argument to support a conclusion
that Respondent is not engaged in a bona fide offering of goods and services,
nor any argument that Respondent is not also known as GRAMAN in China.
Complainant has also not argued that its rights in the name GRAMAN pre-date the
rights of Respondent in China. Absent a showing of these facts, the Panel may
decline to transfer the disputed domain name. See White
Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000)
(declining to transfer the domain name where a full factual record has not been
presented to the Panel such that a conclusive determination can be made
regarding the parties’ respective claims to the contested domain name).
Respondent maintains that it does have rights and legitimate
interests in the domain name since it reflects Respondent’s company name.
Moreover, Respondent also asserts that it is commonly known by the GRAMAN name
in Shenzen, China, where Respondent conducts business. See VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent
has rights and a legitimate interest in the domain name since the domain name
reflects Respondent’s company name).
The Panel notes that Complainant and Respondent are not in
the same field of business, and therefore are not competitors. Since there is
no potential for confusion by Internet users, Respondent may maintain rights in
the GRAMAN mark. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) (finding
that Respondent could have legitimate interest in developing a mark identical
to Complainant’s where the mark was weak and Respondent operated in an
unrelated field); see also Fuji Photo Film Co. v. Fuji Publ'g. Group, D2000-0409 (WIPO July
2, 2000) (finding that Respondent had rights and legitimate interests in the
domain name <fuji.com> where Respondent was using the domain name in
connection with software services).
Registration
and Use in Bad Faith
Complainant asserts they “believe” the name and
mark GRAMAN has been “kidnapped” for the purpose of intercepting business
inquiries intended for Complainant. However, Complainant does not explain how
this would benefit Respondent when it appears the parties are not in the same
business. It is also not alluded to how exactly Respondent’s use leads to “bad
faith” with any particular specificity, as is required under the UDRP Rule 3
(see supra).
Complainant
has not given a factual basis for concluding that Respondent acted in bad
faith. See Caterpillar Inc. v. Off Road Equip. Parts, FA 95497 (Nat.
Arb. Forum Oct. 10, 2000) (refusing to
find bad faith registration where Complainant failed to submit any evidence
that the domain name was registered in bad faith); see also Loris Azzaro BV, SARL v. Asterix & De
Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and indignation
by Complainant that Respondents have registered and are using the Domain Name
in bad faith are insufficient to warrant the making of such a finding in the
absence of conclusive evidence”); see also PRL USA Holdings, Inc. v. Polo,
D2002-0148 (WIPO April 29, 2002) (finding that because Complainant failed to
provide any factual allegations as to the nature of use of the disputed domain
name, Complainant failed to prove that Respondent’s domain names were being
used in bad faith).
Respondent uses the domain name <graman.com>
as the website for Graman Commodities. The firm advertises bath accessories
such as “bath sponge, bath towel and bath pillow, wooden products (wooden comb,
wooden coat hanger and wooden brush), crafts (photo frame, grass basket, etc)
and PVC inflatable products (swimming ring, arm ring, beach ball).” The business claims to have been established
in 1992. There is no showing that
Respondent has intentionally pirated Complainant’s name to cause harm or
confusion with its business
DECISION
The Panel finds
that Complainant’s request should be DENIED.
James P. Buchele, Panelist
Dated: January 16, 2003
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