The Complainant is GIOCHI PREZIOSI, S.p.A. of Milan, Italy, represented by Pietro Massarotto of Milan, Italy.
The Respondent is He Chongge of Shenzhen, People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <gp-toys.com> is registered with OnlineNic, Inc., d/b/a China-Channel.com (“CC”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 10, 2009. On April 14, 2009, the Center transmitted by email to CC a request for registrar verification in connection with the disputed domain name. On April 17, 2009, CC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“UDRP” or “Policy”), the Rules for UDRP (“Rules”), and the WIPO Supplemental Rules (“Supplemental Rules”).
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 April 28, 2009. In accordance with Rules paragraph 5(a), the due date for Response was May 18, 2009. The Response was filed in Chinese on May 13, 2009.
On May 26, 2009, the Center appointed Douglas Clark as the sole panelist in this matter. The Panel finds that it was properly constituted and has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.
The Complaint was filed in English supplemented with a request that English be the language of the proceedings, while the Registration Agreement in this case is in Chinese. On April 17, 2009, the Center notified the Parties in English and Chinese that the Complainant and Respondent would both be given an opportunity to submit comments on Complainant's language request. The Respondent did not file any objection to the language request within the specified due date of April 24, 2009.
On April 28, 2009, the Center notified the Parties by email in English and Chinese inter alia that:
“Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available. ”
Meanwhile, the Center notified the Parties that the power to decide the language of the proceedings lay with the Panel, which had not yet been appointed.
On April 29, 2009, the Respondent submitted its disagreement to the language of proceedings being in English on the ground that it lacks sufficient ability to fully understand the Complaint in English and prepare a response in English.
The Panel concludes that it will proceed in line with the Center's preliminary decision to: 1) accept the Complaint as filed in English; 2) accept a Response in either Chinese or English. The Panel does not require the Respondent to translate its response into English. The Panel will issue its decision in English. Reasoning for this decision is set out in the Discussion and Findings section below.
On June 11, 2006, the Complainant submitted a Reply in English and on the same day the Respondent submitted a Response to that Reply in Chinese.
The Panel has discretion as to whether to accept unsolicited filings. On the date that the Reply and Response were received the Panel had finalised a draft of its decision which, in normal cases, would tend to favor not accepting the filings. However, given the decision of the Panel set out below, the Panel has decided to accept the filings and to consider them so that the parties may consider that their submissions have been considered in full.
4. Factual Background
The Complainant is a toy company incorporated in Italy in 1978. The Complainant asserts that they have the trademark registrations for “GP TOYS” and other related marks. They claim that “GP” is the abbreviation of the group name “GIOCHI PREZIOSI” and “toys” is a reference to its main business operation.
The Respondent registered the domain name <gp-toys.com> on September 26, 2003, shortly after the establishment by the Respondent of a company “Good Promotion Limited” in Hong Kong, SAR of China on March 26, 2003. The Respondent contends that “GP” is the abbreviation of the company name and “toys” is a reference to its main business operation.
5. The Parties' Contentions
A. Complainant
Complainant's main contentions are summarized as follows:
a) Identical or confusingly similar
The disputed domain name incorporates the Complainant's US-registered trademark GP TOYS (registered by Giochi Preziosi Toys Inc of the United States of America) in its entirety. The insertion of a hyphen between terms “gp” and “toys” lacks legal significance since the change is dictated by technological factors and common practice among domain name registrants and users.
In addition, the domain name partially incorporates the trademarks GP STORE & figura and GP TRONIC & figura, which were both registered in Italy by the Complainant.
The Complainant contends that the letters “GP” used in the Respondent's name are an abbreviation of GIOCHI PREZIOSI. The English translation of the Italian phrase “Giochi Preziosi” is “precious toys”, which is related to the commercial activity of the Complainant and its group.
In its Reply, the Complainant repeats that the addition of a hyphen makes no legal difference and asserts that the operator, of the website “www. gp-toys.com”, Good Promotion Limited, sells identical or similar toys.
b) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name; he has no current business with the domain name and has never been commonly known by any trademark or trade name.
The Respondent has no current business and his name does not appear in any register of companies.
The Respondent is neither licensed nor authorized to use Complainant's trademark GP TOYS, and there is no indication that the Respondent would have bona fide interests in relation to the domain name.
In its Reply, the Complainant further contends that the registrant of the domain name is he chongge and that he chongge has no link to Good Promotion Limited who the Respondent argues is the operator of the site.
c) Registered and Used in Bad Faith
The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:
As a producer, seller, and distributer of toys and games, the Respondent is a direct competitor in the Complainant's business. The Respondent's domain name is linked to a website displaying identical or similar products to those of the Complainant. Thus, the Respondent registered the disputed domain name with the purpose of intentionally creating consumer confusion in the marketplace.
For the above reasons, the Complainant requests that the disputed domain name be transferred to the Complainant.
In its Reply, the Complainant argues that the domain name was registered in bad faith and de facto transferred to Good Promotion Limited, a strong competitor of the Complainant. The bad faith is shown because false information was provided to register the domain name; the Respondent has taken active steps to conceal his identity; and, it is not possible to conceive of any plausible use of the domain name that would be legitimate.
B. Respondent
The Respondent submitted two Responses in Chinese to the above claims.
a) Identical or confusingly similar
The Respondent contends that “gp-toys” is the main part of the Respondent's domain name, wherein “GP” is the abbreviation of its company Good Promotion Limited, registered in on March 26, 2003 in Hong Kong, SAR of China. In addition, “gp” is a generic word, and is not owned exclusively by any individual, enterprise, or organization. The same applies to the word “toys” as it is a common noun in English.
“Gp” and “toys” can form different combinations, such as “gptoys”, “gp-toys”, “toys-gp”, etc. Each combination is distinguishable and cannot be confused with the other over the Internet. “www.gptoys.com” and “www.gp-toys.com” are distinguished from each other when users click the above two and would be linked to different websites. Therefore, the insertion of a hyphen between “gp” and “toys” is not a technical change as contended by the Complainant. Because the usage can be distinguished, the Complainant's rights in its trademark GP TOYS do not automatically extend to GP-TOYS.
b) Rights or Legitimate Interests
On March 26, 2003, the Respondent registered the company “Good Promotion Limited” in Hong Kong, SAR of China, and set up a representative office in Shenzhen in the same year. The Respondent focuses its business on selling toys primarily in Mainland China, Hong Kong, SAR of China, and other Asian countries. GP is an abbreviation of “Good Promotion”. The word “toys” indicates the principal business of the company.
The Respondent has been using the domain name in commerce in good faith from the date of registration of the domain name to the present. The Respondent neither intends to tarnish the Complainant's trademark nor misleads consumers for the purpose of commercial gain. Good Promotion Limited's customers have come to know and prefer Good Promotion Limited's products and, as result, the Respondent is known by its domain name, and therefore it has legitimate interests therein.
The Respondent contends that the Complainant cannot reasonably expect to monopolize the worldwide toy market. In addition, the Complainant's position that the Respondent infringes the Complainant's legitimate interests merely because the Respondent competes with Complainant and sells identical or similar toys is misplaced. Rather, the Respondent's actions are part of normal business competition. Finally, the Complainant's business as well as its trademarks is confined to and only known in Europe, but not known in Asia where its business is based.
In his second Response, the Respondent produces his passport and states that he is the boss of Good Promotion Limited.
c) Registered and Used in Bad Faith
The Respondent's registration of its domain name is neither for the purpose of exploiting the Complainant's business, nor selling, renting, or otherwise transferring the domain name registration for profit. Rather, the Respondent's registration is intended to resolve the domain name to the Respondent's company's official website and to promote its products and services online.
The Respondent further argues that his domain is unlikely to disrupt the Complainant's business as there is no defamatory content on the Respondent's website. In addition, the Respondent has never prevented Internet users visiting its website from gaining information about the Complainant or its products.
The Respondent further notes that another domain name <gptoys.com>, which was transferred to the Complainant on May 6, 2008, has neither been resolved to the Complainant's official website nor any other websites, but instead merely links to the website <digitalpreziosi.com> -- a link that appeared only recently. (The Panel notes that at the date this decision was drafted <gptoys.com> resolved to the Complainant's website)
In conclusion, the Respondent has neither registered nor is using the domain name in bad faith.
In his second Response, the Respondent explains that address details given were correct at the time of registration of the domain name but not updated as his company has expanded and moved.
The Respondent contends that the Complainant's actions constitute reverse domain name hijacking because: 1) registration of the domain name does not cause any adverse effects on the Complainant; 2) the Complainant does not submit a reasonable explanation as to why it does not use the domain name <gptoys.com> after the acquisition thereof, and why it did not register the domain name <gp-toys.com> before September 23, 2003; and 3) the Complainant failed to prove GP TOYS is a well-known mark, and to register such trademark in any Asian countries.
Accordingly, the Panel should not order that <gp-toys.com> be transferred to the Complainant.
6. Discussion and Findings
6.1 Language of the Proceedings
The domain name Registration Agreement is in Chinese. According to Rules paragraph 11, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement”.
The Complainant, nevertheless, argues that the proceedings should be in English on the following grounds:
“In fact, the language used in post-Complaint correspondence between the Parties is in English.
Furthermore, English is the usual language for trade and commercial marketing, including the toy industry; the Respondent, in fact, registered the domain name and made it available to a Complainant competitor. The website “www.gp-toys.com” has entirely been written in English without any translation in Chinese. So, it's presumable that the website has been thought for international web users.
For these reasons, I formally submit a request for English to be the language of the present administrative proceedings.”
The Respondent did not object in a timely manner to the Complainant's request. Rather, the Respondent submitted its objection five days after the April 24, 2009 due date.
The Respondent therein argued that: 1) the Respondent registered the domain name in China; and 2) the Respondent lacks sufficient ability to fully understand the Complaint and prepare a response in English.
In ruling on the selection of language, the panel should give consideration to “the parties' level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceedings in the event translations are required and other relevant factors”. Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,
WIPO Case No. D2003-0989.
After reviewing all the correspondence and evidence in this case, the Panel finds the following facts:
1 the Respondent was duly notified by the Center of its rights to object to the Complainant's language request;
2 the Respondent did not make a timely objection to the language request;
3 the Respondent, while claiming to have limited English skills, has been running a website exclusively in English for years;
4 the correspondence between both Parties is in English.
This case is one where this Panel sees no reason to vary from the Center's preliminary decision as to the language of proceedings. Had the Respondent filed a timely response to the Center's notification, the Panel would have had to give greater consideration to the request the proceedings be conducted in Chinese. The Responses filed by the Respondent however clearly shows that he has understood the Complaint in English and there appears to be no prejudice to him.
The Panel concludes that it will proceed in line with the Center's preliminary decision to: 1) accept the Complaint as filed in English; 2) accept a Response in either Chinese or English;
As noted above, the Panel also accepts the Reply in English and the second Response in Chinese.
As a result of this decision, the Panel needs to consider the following issues:
1. Should the Respondent be required to translate its response into English; and
2. Which language should a decision be made in.
With regard to 1, again in the circumstances of this case, the Panel sees no reason to vary from the Center's preliminary decision. A Panel familiar with both languages has been appointed. The Complainant has chosen to file in a language other than the Registration Agreement; the Respondent has responded in accordance with the Center's direction. There seems no reason to force the Respondent to incur extra costs.
With regard to the language of the decision, as it is clear the Respondent does understand English and conducts his business in English, there appears to be no prejudice to issuing a decision in English.
6.2 Substantive Elements of the Policy
Under paragraph 4(a) of the Policy, in order to succeed in the proceedings and obtain transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
(i). The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii). The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii). The domain name has been registered and is being 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 trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's 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 trade mark or service mark from reflecting the mark in a corresponding domain name, provided that 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 Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product.
A. Identical or Confusingly Similar
The Complainant asserts that <gp-toys.com> is confusingly similar to the Complainant's registered trademarks GP TOYS, GP STORE & figur” and GP TRONIC & figura. The Complainant further contends that a hyphen between “gp” and “toys” is not legally significant since it is dictated by technological factors and common practice among domain name registrants and users. The Complainant asserts that it has registered trademark rights over GP TOYS in Classes 9 and 28 in the United State of America , and GP STORE & figura in Classes 9, 12, 14, 16, 18, 25, 28, 35 and 39 and GP TRONIC & figura in Classes 9 and 28 in Italy. The Panel notes that the registration in the United States of America is in the name of Giochi Prezoisi Toys Inc. and not the Complainant. The Complainant in its Complaint stated that it is the owner of these trademarks “by Giochi Prezoisi Toys Inc.”. For the purposes of this decision, the Panel accepts that the Complainant at least has a beneficial ownership in the United States trademarks.
The Panel notes the Class 9 registration in the United States was filed on December 11, 1997 and registered on February 16, 1999. The Class 28 registration in the United States was filed on January 19, 1999 and registered on July 15, 2003. There is a disclaimer on the US Class 28 trademark registration certificate to the effect that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘TOYS', APART FROM THE MARK AS SHOWN.”
The Panel does not consider the domain name <gp-toys.com> to be identical or similar to the Italian trademarks GP STORE & figura or the trademarks GP TRONIC & figura.
The United States registration for GP TOYS in Class 28 for toys was granted in July 2003 before the registration of the domain name <gp-toys.com> in September 2003.
The Panel considers that a hyphen between “gp” and “toys” and the additional term “toys” do not constitute sufficiently distinctive feature to be able to distinguish it from Complaint's registered trademarks.
Therefore, the Panel concludes that the Respondent's domain name is confusingly similar to the Complainant's United Sates registered trademarks. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The key issues argued by both Parties are whether the Respondent's use of the domain name relates to a bona fide offering of goods or services and whether the Respondent has been commonly known by the domain name.
In this regard, the Complainant's contention is based on the grounds that the Respondent (He Chongge) does not use the domain name to conduct commerce and that the company runs the website is unregistered.
The Respondent has filed evidence to the contrary that he registered the company Good Promotion Limited in Hong Kong, SAR of China in March 2003. He argues that GP is an abbreviation of Good Promotion and that “toys” indicates the business the Respondent is in. The unchallenged evidence is that <gp-toys.com> has been used since the registration of the domain name in 2003 to conduct business, the business of Good Promotion Ltd. The Panel accepts the evidence of the Respondent shown by the Hong Kong incorporation certificate and his passport that he is the boss of Good Promotion Ltd. and that his registration is on behalf of Good Promotion Ltd.
As shown by the disclaimer of the US trademark certificate, the Complainant cannot complain about the use of the word “toys” in itself. The Complainant is really complaining about the use of “gp” or “gp” in combination with the word “toys”.
The Panel notes the alleged similarity of products sold by the Respondent and that the Respondent does not deny the similarity.
However, the Respondent has been making use of the domain name unchallenged for more than 5 years.
The Complaint, is, in essence, against the use of a two letter abbreviation combined with a descriptive word. General trademark law provides limited protection to two letter trademarks because they can be general indicators. The Respondent has said that the letters GP are an abbrevation of the company name Good Promotion. This company name was registered before the US Class 28 trademark was registered. Based on the available record, it is not possible to find that the Respondent has no right or legitimate interest in the domain name <gp-toys.com>
The Panel is, therefore, unable to find the Complainant has discharged its burden of proof to show that the Respondent has no rights or legitimate interest in the domain name.
Accordingly, the Panel finds that the Complainant has not satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Given the Panel's finding regarding legitimate rights, the Panel also finds that there is insufficient evidence to show that the domain name <gp-toys.com> was registered in bad faith.
The Complainant contends that the disputed domain name was registered in bad faith because the Respondent has used false registration information; concealed his identity and that it is not possible conceive any legitimate use. The Complainant further contends that the domain name is being used in bad faith because the website associated with the disputed domain name promotes toys confusingly similar to those sold by the Complainant.
With regard to registration in bad faith, the Respondent has provided plausible explanations for the choice of <gp-toys.com> and for the addresses used. There is no direct evidence that the Respondent was aware of the Complainant.
On the other hand, the Complainant has provided evidence of fame of the Complainant that suggests that the Respondent, as a person in the toy industry, should have known of the Complainant at the date of registration.
The delay in bringing these proceedings for over 5 years also causes the Panel some concern as to the appropriateness of depriving the Respondent, without a full hearing, of a domain name that has been used for business for that period of time.
The domain name resolution procedures are designed to resolve relatively uncomplicated domain disputes. The Panel cannot therefore on the facts before it, and with the procedures available to it, reach a conclusion that the Respondent has no legitimate interest in the domain name nor that he has registered and is using the domain name in bad faith. The Panel must therefore deny the Complaint.
This is a dispute that would in this Panel's view be much more appropriately handled by a competent court, which is equipped to resolve factual disputes of the type in dispute in this case.
In the present case, the Panel finds that the Complainant, while ultimately unsuccessful, did not lack a good faith basis for bringing its Complaint. Accordingly, the Respondent's charge of reverse domain name hijacking is rejected
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel denies the Complaint's request to transfer the domain name <gp-toys.com> to the Complainant.
Douglas Clark Sole Panelist
Dated: June 16, 2009
Stay updated! Get new cases and decisions by daily email.
