The Complainant is Giga-Byte Technology Co. Ltd, Taiwan, Province of China,
represented by Legal & IPR Department at Giga-Byte Technology Co. Ltd.
The Respondent is ST OKLIYS, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name <źźźÎżĆźź.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
Ą°CenterĄą) on February 6, 2007. On February 8, 2007, the Center transmitted by
email to eNom a request for registrar verification in connection with the domain
name at issue. On February 8, 2007, eNom transmitted by email to the Center
its verification response confirming that the Respondent is listed as the registrant
and providing the contact details for the administrative, billing, and technical
contact. On February 15, 2007, the Center verified that the Complaint satisfied
the formal requirements of the Uniform Domain Name Dispute Resolution Policy
(the Ą°PolicyĄą), the Rules for Uniform Domain Name Dispute Resolution Policy
(the Ą°RulesĄą), and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (the Ą°Supplemental RulesĄą).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally
notified the Respondent of the Complaint, and the proceedings commenced on February
15, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response
was March 7, 2007. The Respondent did not submit any response. Accordingly,
the Center notified the RespondentĄŻs default on March 8, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter
on March 26, 2007. The Panel finds that it was properly constituted. The Panel
has submitted the Statement of Acceptance and Declaration of Impartiality and
Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
4. Factual Background
The Complainant was established in 1986 in Taiwan and it is in the business
of manufacturing IT products such as motherboards, graphic cards and other computer
hardware. In recent years, the Complainant has expanded its business to include
LCD devices, notebooks, power supply and mobile phones.
The Chinese name of the Complainant is źźźÎżĆźźšÉˇÝÓĐĎŢšŤËž. In the Chinese language
community, the Complainant is known as Ą°źźźÎżĆźźĄą and Ą°źźźÎĄą. The Complainant has
registered numerous subsidiaries all over the world including Ningbo Giga-Byte
Technology Ltd (Äţ˛¨źźźÎżĆźźÓĐĎŢšŤËž) and Dongguan Giga-Byte Electronic Ltd (śŤÝ¸źźźÎľç×ÓÓĐĎŢšŤËž).
The Complainant has about 4,500 employees in China and about 1,800 employees
worldwide.
The Complainant also owns several registered Chinese character trademarks źźźÎżĆźź
and źźźÎżĆźźGIGA-BYTE TECHNOLOGY in Taiwan, Province of China, and Hong Kong, SAR
of China. The trademarks źźźÎżĆźź and źźźÎżĆźźGIGA-BYTE TECHNOLOGY have been used in
Taiwan since the Complainant was founded in 1986. The źźźÎżĆźź trademark was registered
in Taiwan in 2002 and in Hong Kong in 2003 whilst the źźźÎżĆźźGIGA-BYTE TECHNOLOGY
trademark was registered in Taiwan in 2002.
The supporting material provided also indicates that the trademark źźźÎżĆźźGIGA-BYTE
TECHNOLOGY has been used in prominent ways on the ComplainantĄŻs IT products
in China since 1996 including packaging; magazines, newspapers and web banners
advertisements; trade fairs and IT promotional events; online tournaments; billboards
and light boards; Internet IT product reviews; and resellers and distributors.
The Complainant has registered more than 140 domain names in the world including
<źźźÎżĆźź.cn>; <źźźÎżĆźź.ÖĐšú>, <źźźÎżĆźź.ÍřÂç>; <źźźÎżĆźź.šŤËž>; <źźźÎżĆźź.tw>;
<źźźÎżĆźź.cc>; <źźźÎ.cc> and internet keywords such as Ą°źźźÎĄą; Ą°źźźÎżĆźźĄą; Ą°źźźÎÖ÷°ĺĄą
and Ą°źźźÎĎÔż¨Ąą. The aforementioned domain names and Internet keywords are connected
to the websites Ą°www.gigabyte.com.cnĄą or Ą°www.gigabyte.com.twĄą.
5. PartiesĄŻ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant contends that based on the evidence adduced before the Panel,
the Complainant has rights or legitimate interests, whether registered and unregistered
rights, in the trademarks Ą°źźźÎżĆźźĄą and Ą°źźźÎżĆźźGIGA-BYTE TECHNOLOGYĄą and that these
trademarks are both well-known in the Chinese language community.
The Complainant contends that the disputed domain name <źźźÎżĆźź.com> except
for the generic top-level domain designation Ą°.comĄą is identical to the ComplainantĄŻs
trademark Ą°źźźÎżĆźźĄą. The Ą°źźźÎżĆźźGIGA-BYTE TECHNOLOGYĄą trademark consists of two parts:
Ą°źźźÎżĆźźĄą and Ą°GIGA-BYTE TECHNOLOGYĄą. The Complainant contends that Ą°TECHNOLOGYĄą
is the translation of Ą°żĆźźĄą while Ą°źźźÎĄą is not the translation of Ą°GIGA-BYTE TECHNOLOGYĄą
but is the commonly accepted transliteration of the ComplainantĄŻs company name
Ą°GIGA-BYTEĄą in China. This fact is supported by the fact that numerous websites
refer to the Complainant as Ą°źźźÎĄą or Ą°źźźÎżĆźźĄą. The Complainant contends that the
Chinese characters Ą°źźźÎżĆźźĄą are the dominant part of the ComplainantĄŻs Ą°źźźÎżĆźźGIGA-BYTE
TECHNOLOGYĄą trademark. The four Chinese characters Ą°źźźÎżĆźźĄą in the disputed domain
name are identical to the dominant part of the ComplainantĄŻs Ą°źźźÎżĆźźGIGA-BYTE
TECHNOLOGYĄą trademark and the Complainant contends that this is the portion
which will attract consumersĄŻ attention. The Complainant contends that neither
the suffix Ą°.comĄą nor the English words Ą°GIGA-BYTE TECHNOLOGYĄą could distinguish
the domain name <źźźÎżĆźź.com> from the ComplainantĄŻs trademarks. Thus, the
domain name <źźźÎżĆźź.com> is confusingly similar to the trademark Ą°źźźÎżĆźźGIGA-BYTE
TECHNOLOGYĄą.
Rights or Legitimate Interests
The Complainant contends that Ą°źźźÎżĆźźĄą is not a generic term in the Chinese language.
The ComplainantĄŻs adoption, application and registration of the trademarks Ą°źźźÎżĆźźĄą
and Ą°źźźÎżĆźźGIGA-BYTE TECHNOLOGYĄą precede the RespondentĄŻs registration of the
disputed domain name on April 20, 2006.
The Complainant contends that no other person or legal entity had registered
or used the trademarks or similar trademarks in the form of Ą°źźźÎżĆźźĄą and Ą°źźźÎżĆźźGIGA-BYTE
TECHNOLOGYĄą in the Chinese language countries or regions including China, Taiwan,
Hong Kong SAR of China, Macau SAR of China, Singapore and Malaysia. The Complainant
contends that the Respondent owns no rights in Ą°źźźÎżĆźźĄą, whether registered or
unregistered rights.
The Complainant has not authorized the Respondent to use the Ą°źźźÎżĆźźĄą name nor
to include that mark in any domain name. The disputed domain name is now linked
to a third party website Ą°www.baidu.comĄą offering information search services
which are completely unrelated to the disputed domain name. The Complainant
contends that neither the Respondent nor Baidu has any business relationship
with the Complainant. Consequently, the Respondent is not making a legitimate
noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent is ambiguously identified in the
WHOIS record as IDN ST OKLIYS and the few months which the Respondent has linked
its domain name to the Baidu website could not make the Respondent commonly
known by the disputed domain name nor is there any reason to believe that the
Respondent has been commonly known by the disputed domain name.
The Complainant contends that the Respondent by linking the disputed domain
name to the Baidu website has prejudiced the interest of the ComplainantĄŻs famous
trademarks and has diverted the public from the ComplainantĄŻs websites to BaiduĄŻs
website, driving large volume of Internet traffic as a result of the ComplainantĄŻs
famous trademarks Ą°źźźÎżĆźźĄą. Such use of the disputed domain name is not consistent
with a bona fide offering of goods or services within the meaning of the Policy.
Therefore, the Complainant contends that the Respondent has no rights or any
legitimate interest in respect of the domain name <źźźÎżĆźź.com>.
Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and used
in bad faith under paragraph 4(a)(iii) and (iv) of the Policy based on the following
reasons:
(a) The Respondent has taken steps to conceal its true identity and has intentionally
provided false contact information in breach of its registration agreement;
(b) The ComplainantĄŻs trademarks have a strong reputation and are widely known,
as evidenced by their substantial use. Thus, it is indisputable that the Respondent
had knowledge of the Complainant and its famous trademarks prior to the registration
of the disputed domain name.
(c) The RespondentĄŻs name is ST Okliys which in the ComplainantĄŻs opinion has
nothing to do with Ą°źźźÎżĆźźĄą and the Respondent could choose any domain name related
to its name which would not impinge on the trademark rights of the well-known
marks Ą°źźźÎżĆźźĄą and Ą°źźźÎżĆźźGIGA-BYTE TECHNOLOGYĄą. The only conceivable reason for
the RespondentĄŻs choice is that the Respondent consciously wants to take advantage
of the fame of the ComplainantĄŻs well- known trademarks by creating a likelihood
of confusion, diverting Internet users to the RespondentsĄŻ website or a third-partyĄŻs
website.
(d) The Respondent by using the domain name has intentionally attempted to attract
for commercial gain, Internet users to a third party BaiduĄŻs website by creating
a likelihood of confusion with the ComplainantĄŻs trademarks as to the source,
sponsorship, affiliation or endorsement of the third party BaiduĄŻs website.
B. Respondent
The Respondent did not reply to the ComplainantĄŻs contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this
proceeding and obtain the transfer of the disputed domain name, the Complainant
must establish that each of the three following elements is satisfied:
1. the domain name 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with
the Complainant to establish that all these three elements are satisfied in
this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide
the Complaint on the basis of the statements and documents submitted and in
accordance with the Policy, the Rules and any rules and principles of law that
it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules,
if a party, in the absence of exceptional circumstances, does not comply with
any provision of, or requirement under the Rules of any request from the Panel,
the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular
with regard to the content of the relevant provisions of the Policy, (paragraphs
4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has produced substantial evidence to demonstrate that it has
registered trademark rights in the źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY marks
in Taiwan and Hong Kong. The Panel notes also the supporting material provided
by the Complainant indicating extensive usage of the źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE
TECHNOLOGY marks by the Complainant in prominent ways on the ComplainantĄŻs IT
products in China since at least 1996 including packaging; magazines, newspapers
and web banners advertisements; trade fairs and IT promotional events; online
tournaments; billboards and light boards; Internet IT product reviews; resellers
and distributors. Several panels under the Policy have decided that the Policy
affords protection not only to those having rights in registered trademarks
but also to those having common law rights in their trade or service marks.
See Bennett Coleman & Co Ltd v. Steven S Lalwani WIPO
Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo
Signs, WIPO Case No. D2000-0131; Cedar
Trade Associates, Inc. v. Greg Ricks, NAF Case No. 93633; and Passion Group
Inc. v. Usearch Inc. AF-0250. The Panel finds that the Complainant has succeeded
in establishing rights in the źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY marks for the
purpose of the first element of the Policy.
The Panel also notes that amongst the predominantly Chinese speaking communities
in countries and regions such as China, Hong Kong, Taiwan, Macau, Singapore
and Malaysia, Ą°źźźÎżĆźźĄą is apparently used as a transliteration of the ComplainantĄŻs
company name GIGA-BYTE TECHNOLOGY LTD with Ą°źźźÎĄą being the transliteration of
Ą°GIGAĄą and Ą°żĆźźĄą referring to Ą°TECHNOLOGYĄą. Even if one accepts that Ą°źźźÎĄą may
suggest a meaning of Ą°excellent or good skillsĄą and in this regard, is descriptive
of the word Ą°żĆźźĄą or Ą°TECHNOLOGYĄą, the Panel is of the view that through extensive
and substantial use of these marks źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY by the
Complainant in the predominantly Chinese speaking countries and regions, these
marks źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY have since acquired a secondary meaning
denoting origins of goods or services from the Complainant.
In assessing whether there is identity or confusing similarity between the
ComplainantĄŻs trademark and the disputed domain name, the Panel shall have regard
to the degree of visual, aural or conceptual similarity between them and where
appropriate, evaluate the importance to be attached to these different elements.
The disputed domain name comprises (a) an exact reproduction of the ComplainantĄŻs
trademark źźźÎżĆźź and the Chinese portion of źźźÎżĆźź GIGA-BYTE TECHNOLOGY mark and
(b) the suffix Ą°.comĄą. The Chinese characters Ą°źźźÎżĆźźĄą is the dominant and the
distinctive element of the ComplainantĄŻs mark and it has been reproduced in
its entirety in the disputed domain name. The Panel finds that the four Chinese
characters Ą°źźźÎżĆźźĄą portion is the most prominent part of the disputed domain
names which will attract consumersĄŻ attention. The Panel finds that the suffix
Ą°.comĄą denotes that this domain name is in the generic top level domain and
it is well-established that the addition of such a suffix to a trademark may
be disregarded for the purpose of assessing identity or confusing similarity
under the Policy.
For the above mentioned reasons, the Panel therefore finds that the disputed
domain name <źźźÎżĆźź.com> is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
Based on the following reasons the Panel finds that the Respondent has no rights
or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the domain
name or reasons to justify the choice of the word Ą°źźźÎżĆźźĄą in the domain name;
2. There is no evidence on the record to show that the Complainant has licensed
or otherwise permitted the Respondent to use its trademarks or to apply for
or use any domain name incorporating the trademarks;
3. There is no indication on the record that the Respondent is commonly known
by the disputed domain name and/or is using the domain name in connection with
a bona fide offering of goods or services;
4. The Complainant and its źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY marks enjoy a
considerable reputation with regard to IT products and computer hardware. Consequently,
in the absence of contrary evidence from the Respondent, the źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE
TECHNOLOGY marks are not those that traders could legitimately adopt other than
for the purpose of creating an impression of an association with the Complainant.
According to paragraph 4(c) of the Policy, a respondent may establish its rights
or legitimate interests in the domain name, among other circumstances, by showing
any of the following elements:
Ą°(i) before any notice to you [Respondent] of the dispute, your use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii) you [Respondent] (as an individual, business, or other organization) have
been commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of
the domain name, without intent for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue.Ąą
The Panel notes that the Respondent did not respond to the ComplainantĄŻs Complaint
and has not provided any evidence of the circumstances of the type specified
in paragraph 4(c) of the Policy, or of any other circumstances giving rise to
a right to or legitimate interest in the domain name.
The Panel finds for the Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation,
shall be evidence of the registration and use of the domain name in bad faith,
namely:
(i) circumstances indicating that the Respondent has registered or acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the Complainant who is the owner
of the trademark or service mark or to a competitor of the complainant, for
valuable consideration in excess of the RespondentĄŻs documented out-of-pocket
costs directly related to the domain name; or
(ii) the 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;
or
(iii) the Respondent has registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to the RespondentĄŻs website or
other on-line location, by creating a likelihood of confusion with the ComplainantĄŻs
mark as to the source, sponsorship, affiliation, or endorsement of the RespondentĄŻs
website or location or of a product.
The Panel concludes based on the case file that the circumstances referred
to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and
upon the evidence of these circumstances and other relevant circumstances, it
is adequate to conclude that the Respondent has registered and used the disputed
domain name in bad faith.
Firstly, the Panel finds that the Complainant and its marks źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE
TECHNOLOGY enjoy a considerable reputation with regard to IT products and computer
hardware in the predominantly Chinese speaking countries and regions such as
China, Hong Kong, Taiwan, Macau, Singapore and Malaysia. This is evidenced by
the extensive and substantial use of these marks on the ComplainantĄŻs products.
The Complainant also has a substantial presence in the Internet as it has registered
and used more than 140 domain names in the world including <źźźÎżĆźź.cn>;
<źźźÎżĆźź.ÖĐšú>, <źźźÎżĆźź.ÍřÂç>; <źźźÎżĆźź.šŤËž>; <źźźÎżĆźź.tw>; <źźźÎżĆźź.cc>;
<źźźÎ.cc> and internet keywords such as Ą°źźźÎĄą; Ą°źźźÎżĆźźĄą; Ą°źźźÎÖ÷°ĺĄą and Ą°źźźÎĎÔż¨Ąą.
In this day and age of the Internet and advancement in information technology,
the reputation of brands and trademarks transcend national borders. Therefore,
the Panel finds that it is highly unlikely that the Respondent would not have
had actual notice of the ComplainantĄŻs trademark rights at the time of the registration
of the domain name. Consequently, it would have been pertinent for the Respondent
to provide an explanation of its choice in the disputed domain name, failing
which the Panel draws the conclusion that the disputed domain names were registered
in bad faith with intent to create an impression of an association with the
Complainant and its IT products and computer hardware.
The Complainant has also adduced evidence to support that by using confusingly
similar disputed domain name, the Respondent has intentionally attempted to
attract, for commercial gain, Internet users to the RespondentĄŻs website which
is currently linked to a third party BaiduĄŻs website. Given the considerable
reputation of the ComplainantĄŻs źźźÎżĆźź and źźźÎżĆźź GIGA-BYTE TECHNOLOGY marks, the
compelling conclusion is that the Respondent, by choosing to register and use
a domain name which is confusingly similar to the ComplainantĄŻs famous marks,
intended to ride on the goodwill of the ComplainantĄŻs marks in an attempt to
exploit, for commercial gain, Internet traffic destined for the Complainant.
Consequently, the Respondent has through the use of a confusingly similar domain
name created a likelihood of confusion with the ComplainantĄŻs źźźÎżĆźź and źźźÎżĆźź
GIGA-BYTE TECHNOLOGY trademarks and this constitutes a misrepresentation to
the public that his website is in one way or the other associated or connected
with the ComplainantĄŻs. In the absence of evidence to the contrary and rebuttal
from the Respondent, the choice of the disputed domain name and the conduct
of the Respondent as far as the website on to which the domain name resolves
are indicative of registration and usage of the disputed domain name in bad
faith.
The Panel accepts the ComplainantĄŻs submission that this fact coupled with
all the other evidence proves that the Respondent has registered and used the
disputed domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <źźźÎżĆźź.com>
be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Dated: April 9, 2007
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