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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Yue-Sai Kan et al. v. Gong Gen Yuan et al.

Case No. D2001-0548

 

1. The Parties

The Complainants are Yue-Sai Kan, 6 Sutton Square, New York, NY 10022, United States of America; Yue-Sai Kan Holdings, LLC, 6 Sutton Square, New York, NY 10022, United States of America; Yue-Sai Kan Cosmetics, Ltd. (USA), 6 Sutton Square, New York, NY 10022, United States of America; Yue-Sai Kan Cosmetics (Shenzhen), Ltd., No. 1028 Yungiao Road, Jingiao Area, Pudong, Shanghai 201206, China; Yue-Sai Kan Cosmetics, Ltd. (USA), L.P., 1325 Avenue of the Americas, New York, NY 10019, United States of America.

The Respondents are Gong Gen Yuan, 123 Shifeng Road, Pingqiao, Tiantai, ZJ 317203, China; Yue-Sai Wu, 1F, No. 15 Lane 83 Han Sheng East Road, Pan Chiao City, Taipei Hsien, 220, Taiwan; Qi Zhong Yan, 88 Shangchang Road, Tiantai, Zhejiang 317200, China.

 

2. The Domain Names and Registrars

The domain name <yue-sai.com> is registered with Tucows.com, Inc.

The domain name <yuxi.com> is registered with BulkRegister.com, Inc.

 

3. Procedural History

On April 17, 2001, a Complaint was filed by the Complainants with the WIPO Arbitration and Mediation Center (the "Center"). The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). This Administrative Panel ("Panel") is satisfied that this is the case.

On April 24, 2001, the Center, after verification of the subject Registrar information in connection with the disputed domain names, forwarded Notification of Complaint and Commencement of Administrative Proceeding (which included a copy of the Complaint) to the Respondents by email and courier. The due date for the Respondents to respond was indicated as May 13, 2001.

On May 15, 2001, the Center dispatched Notification of Respondent Default via email to the Respondents because no response from the Respondents had been received by the due date.

The undersigned panelist, Mr. Mark Yang, submitted to the Center, a Statement of Acceptance and Declaration of Impartiality and Independence. The Center then transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Mark Yang was formally appointed as the Sole Panelist and the projected Decision date was June 4, 2001. The Sole Panelist finds that this Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

This Panel has not received any requests from the Complainants or the Respondents regarding further submissions, waivers or extensions of deadlines, and this Panel has not found it necessary to request any further information from the parties (taking note of Respondents’ default in responding to the Complaint). The proceedings have been conducted in English.

Having reviewed the communication records in the case file provided by the Center, this Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, this Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.

This Panel did notice in the case file provided by the Center, an email dated April 24, 2001, from <gongjx@163.net> (the email address of the Respondent Qi Zhong Yan) to "Domain.Disputes@wipo.int" with subject line of "gongjx@163.net’s AutoReply" with the body of the message being about one line of completely unintelligible characters (having no Roman letters or plaintext). The Center does not appear to have followed-up on this email. This Panel finds no fault with the Center in ignoring the unintelligible email, considering the following factors: (a) the unintelligible nature of that email, (b) the subject line having the description "AutoReply" which suggests to this Panel that the body of the message was not responsive to the Complaint, (c) the absence of any other attempts by any of the Respondents to communicate with the Center, and (d) the Center’s otherwise standard and executed procedures for communications with the Complainants. The language of communications is English (see Rules, paragraphs 2(d) and 11, and the English language of the Registration agreements with the subject domain name registrars) and the April 24, 2001, email completely fails to use an intelligible language.

 

4. Factual Background

Complainant Yue-Sai Kan is a Chinese-American entrepreneur and television personality who has been featured in various major publications and been presented numerous rewards for her achievements in both the United States and China. Complainant Yue-Sai Kan has achieved international recognition and has accrued goodwill to her "first name", YUE-SAI in Cantonese and YU-XI in Mandarin.

Complainant Yue-Sai Kan founded Yue-Sai Kan Cosmetics (Shenzhen), Ltd. and Yue-Sai Kan Cosmetics Ltd. (USA).

Complainant Yue-Sai Kan Cosmetics (Shenzhen), Ltd. is a cosmetic products manufacturer in China. Yue-Sai Kan Cosmetics is now China’s leading cosmetic brand, with products selling in over 600 locations through 18 regional offices in China’s major markets.

Complainants Yue-Sai Kan Cosmetics Ltd. (USA) and Yue-Sai Kan Cosmetics (Shenzhen), Ltd. have used and registered in the United States of America, China and various countries in Asia, the YUE-SAI and YU-XI trade-marks, which represent the Chinese transliterations of the "first name" of Complainant Yue-Sai Kan.

Complainant Yue-Sai Kan Cosmetics, Ltd. (USA), L.P., is a limited partnership that is the exclusive world-wide licensee of the YUE-SAI and YU-XI trade-marks from the joint licensors, Complainant Yue-Sai Kan and Complainant Yue-Sai Kan Cosmetics Ltd. (USA).

Complainant Yue-Sai Kan Holdings, LLC, with the authorization of Complainant Yue-Sai Kan, has registered the domain names <yuesai.com>, <yue-saikan.com> and <yuesaikan.com>. These domain names all link to a site operated by Complainant Yue-Sai Kan Holdings, LLC that provides information about Yue-Sai Kan and her media, business and charitable endeavors.

On or about January 9, 2000, Respondent Gong Gen Yuan acquired the <yuxi.com> domain name registration with Network Solutions, Inc.

On or about February 22, 2000, Respondent Gong Gen Yuan acquired the <yue-sai.com> domain name registration with Network Solutions, Inc. from its previous owner Haikang Electron, Inc. of Beverly Hills, California.

On November 14, 2000, Complainant Yue-Sai Kan, through her counsel, objected in writing and by email, fax and courier, to Respondent Gong Gen Yuan’s use and registration of the domain names <yue-sai.com> and <yuxi.com>, and demanded that Respondent Gong Gen Yuan cease and desist from further use of those names (the "November 14, 2000 Demand Letter").

By fax on or about November 25, 2000, Respondent Gong Gen Yuan acknowledged receipt of the November 14, 2000, Demand Letter and indicated that he would respond after he obtained a full translation into Chinese. No response has been received.

After receipt of the November 14, 2000, Demand Letter, Respondent Gong Gen Yuan transferred the domain name <yuxi.com> to his wife, Respondent Qi Zhong Yan, and conspired with Pei Shu Huang to transfer the domain name <yue-sai.com> to a fictitious registrant, Respondent Yue-Sai Wu; and the domain name registration of <yue-sai.com> was also transferred from the US-based registrar Network Solutions, Inc. to the Canadian-based registrar,Tucows.com, Inc.

No substantive responses to the Complaint and the Notice of Default have been received from any of the Respondents. The only communication from any of the Respondents is the aforementioned email dated April 24, 2001, from <gongjx@163.net> to "Domain.Disputes@wipo.int" with subject line of "gongjx@163.net’s AutoReply" with the body of the message being unintelligible script.

Respondent Gong Gen Yuan has registered in excess of 300 domain names, many of which incorporate well-known Chinese trade-marks and trade names.

 

5. Parties’ Contentions

A. The Complainants contend that the Respondents’ domain names <yuxi.com> and <yue-sai.com> are identical and/or confusingly similar to the Complainants’ YUE-SAI and YU-XI marks, that the Respondents have no rights or legitimate interest in respect of the domain names, and that the domain names are registered and are being used in bad faith.

B. The Respondents have not responded to these proceedings except as aforementioned April 24, 2001, email from <gongjx@163.net>. This Panel does not consider such an unintelligible communication to be responsive in any way. This Panel ignores such communication for the purpose of rendering this Decision. The Panel therefore considers that the Respondents have no contentions.

 

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, para. 2(a)).

In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondents of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondents to furnish a Response to the Complaint, is not due to any omission by the Center. There is sufficient evidence in the case file provided by the Center, in the form of courier receipts and confirmations of the sending of e-mail that the Center discharged its obligations under Rules, para. 2(a) (see Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are:

(i) Respondent’s domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief.

Respondents have defaulted, and have not responded to the allegations in the Complaint. This Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by this Panel on the basis of Complainant’s undisputed allegations (Rules, para. 15(a)). These factual conclusions are set out below and in Factual Background, above.

Respondent’s domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights

Complainants are the holder and/or licensee of trade-mark registrations for the marks YUE-SAI and YU-XI in the United States of America, China, and some other Asian countries. Complainants' registrations of the mark YUE-SAI on the Principal Register at the United States PTO, establishes a presumption of certain aspects of their validity in the United States. This Panel determines that Complainants have rights in the disputed marks.

Based on the dates of the Complainants' registrations of the marks YUE-SAI and YU-XI in various Trade-marks Offices in Asia and the United States of America, this Panel determines that Complainants' rights in the marks arose prior to Respondents' registration, on or about respectively February 22, 2000, and January 9, 2000, of the disputed domain names <yue-sai.com> and <yuxi.com>.

The Complainants allege that the disputed domain names are identical and/or confusingly similar to the Complainants' registered marks YUE-SAI and YU-XI. Because the Respondents have not contested this allegation, this Panel therefore adopts as true the applicable facts and conclusions alleged in the Complaint. Since the disputed domain names <yue-sai.com> and <yuxi.com> are alleged to be identical and/or confusingly similar to Complainants' marks YUE-SAI and YU-XI, and there is no evidence otherwise, further analysis is unnecessary and this Panel finds that the disputed domain names are confusingly similar to Complainant’s marks YUE-SAI and YU-XI, within the meaning of paragraph 4(a)(i) of the Policy.

Respondent has no rights or legitimate interests in respect of the domain name

The Complainants allege that "A review of the events preceding the filing of this Complaint demonstrates Respondents' lack of a legitimate interest in the Domain Names, as well as their bad faith (in) use and registration of the Domain Names." This alleged conclusion is supported by the allegations of facts and supporting Exhibits (see paragraphs 38 to 48 of the Complaint). Among other allegations, the Complainants list the following alleged facts and conclusions:

1) That Respondent Gong Gen Yuan acquired the domain name <yuxi.com> on January 9, 2000. However, after receipt of the November 14, 2000, Demand Letter from Complainant Yue-Sai Kan, in order to maintain his control over the domain name and frustrate the Complainant’s effort to recover the domain name, he transferred the domain name to his wife, Respondent Qi Zhong Yan;

2) That Respondent Gong Gen Yuan acquired the domain name <yue-sai.com> from its previous registrant Haikang Electron, Inc. on or about February 22, 2000. However, after his receipt of the November 14, 2000, Demand Letter from Complainant Yue-Sai Kan, in order to maintain his control over the domain name and frustrate the Complainant’s effort to recover the domain name, he conspired with Pei Shu Huang, the current administrative, billing and technical contact for the domain name, to transfer the domain name to a fictitious registrant Yue-Sai Wu. The registration for <yue-sai.com> was also transferred from United States-based Network Solutions, Inc. to Canada-based Tucows.com, Inc. in an attempt to avoid the effects of US anti-cybersquatting laws; and

3) That Respondent Gong Gen Yuan has engaged in a pattern of registering domain names incorporating well-known Chinese trade-marks and trade names, and has registered on his personal behalf, more than 300 such domain names.

These facts may lead to various conclusions, including that there is no legitimate interest in the disputed domain name registrations.

Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, demonstrate the Respondents' rights or legitimate interests for the purposes of paragraph 4a(ii) of the Policy.

The Respondents filed no response. There is, therefore, no evidence before the Panel to indicate that the Respondents could bring themselves within one or more of the circumstances set out in paragraph 4(c) of the Policy or could otherwise establish rights or legitimate interests in the domain name in issue. Further, the Complainant has not licensed or otherwise permitted the Respondents to use the domain names at issue or to apply for or use any domain name incorporating that mark.

In the circumstances, this Panel finds no evidence that would tend to establish that the Respondents have rights or legitimate interests in respect of the domain names at issue. The Complainants succeed in establishing the requirements of paragraph 4a (ii) of the Policy.

Respondent’s domain name has been registered and is being used in bad faith

Complainants’ alleged conclusion of registering and use in bad faith, is supported by the allegations of facts and supporting Exhibits (see paragraphs 38 to 48 of the Complaint). These allegations of facts and conclusions, are not contested by the Respondents.

Certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (Policy, para. 4(b)(ii)).

Respondent Gong Gen Yuan's pattern of conduct is described in the Complaint, including allegations that the Respondent has registered in excess of 300 domain names, where many of these registrations are for well-known Chinese trade-marks and trade names.

This Panel finds that Respondent Gong Gen Yuan has a pattern of conduct that includes regularly registering as domain names, the trade-marks of others and variations of those trade-marks. This pattern of conduct has the effect of preventing legitimate trade-mark holders from using the domain names that correspond to the trade-mark holders’ marks.

This Panel finds that Respondent Gong Gen Yuan registered the domain names <yue-sai.com> and <yuxi.com> and took actions after receipt of the November 14, 2000, Demand Letter, in order to prevent the Complainants from using the same. Accordingly, the disputed domain names have been registered and are being used in bad faith. The Complainants succeed in establishing the requirements of paragraph 4a (iii) of the Policy.

 

7. Decision

This Panel finds that names <yue-sai.com> and <yuxi.com> are confusingly similar to Complainants’ marks YUE-SAI and YU-XI, that the Respondents have no rights or legitimate interests in respect of the disputed domain names and that the disputed domain names have been registered and are being used in bad faith, within the meaning of paragraph 4(a) of the Policy. This Panel orders that the domain names <yue-sai.com> and <yuxi.com> be transferred to Complainant Yue-Sai Kan Holdings, LLC.

 

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Mark M. Yang
Sole Panelist

Dated: June 4, 2001