|Complainant||21 Club, Inc.|
|Panelist||Barker, Sir Ian|
|Date of Decision||07.12.2000|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
"21" Club Inc. v. 21 Club
Case No. D2000-1159
1. The Parties
The Complainant is "21" Club Inc., a New York corporation with its principal place of business at 21 West 52nd Street, New York, NY, USA. The Complainant is represented by Mr. J. Timothy Hobbs of Wiley Rein & Fielding, Attorneys, Washington DC, USA.
The Respondent is 21 Club of Nanchang City, Jiangxi Province, Nanchang, JX 33046, China. The Respondent has not filed a Response and is not represented.
2. The Domain Name and Registrar
The domain name at issue is "21club.net". The domain name is registered with Network Solutions Inc. of 505 Huntmar Drive, Herndon, Virginia 20170, USA ("NSI"). The domain name was registered on April 27, 2000.
3. Procedural History
The Amended Complaint submitted by 21 Club Inc. was received on September 22, 2000, (electronic version) and September 25, 2000, (hard copy) by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center"). The Complainant had earlier filed a Complaint which was replaced by the amended Complaint.
On September 18, 2000, a request for Registrar verification was transmitted by the WIPO Center to NSI, requesting it to:
Confirm that a copy of the Complaint had been sent to it by the Complainant as required by the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).
Confirm that the domain name at issue is registered with NSI.
Confirm that the company identified as the Respondent is the current registrant of the domain name.
Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in NSIs WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.
Confirm that the Uniform Domain Name Dispute Resolution Policy was in effect.
Indicate the current status of the domain name.
By email dated September 18, 2000, NSI advised WIPO Center as follows:
NSI had received a copy of the Amended Complaint from the Complainant.
NSI is the Registrar of the domain name registration "21club.net".
21 Club at the address above is shown as the "current registrant" of the domain name "21club.net".
Steve Sun at the same address is the administrative contact.
Beijing XinHai Technology Development of Beijing, China is shown as the technical, zone and billing contact.
NSIs 5.0 Service Agreement applies to the domain name.
The domain name registration "21club.net" is in "Active" status.
NSI has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").
The advice from NSI that the Respondent is the "current registrant" of the domain name in question indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIs Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.
Having verified that the Amended Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on September 26, 2000, transmitted by post/courier and by email a notification of Amended Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Amended Complaint was also emailed to NSI and ICANN.
The Complainant elected to have its Amended Complaint resolved by a single panel member: it has duly paid the amount required of it to the WIPO Center.
The Respondent was advised that a Response to the Amended Complaint was required within 20 calendar days (i.e., by October 15, 2000). The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent sent 2 emails to WIPO Center on September 27, 2000. WIPO Center on October 26, 2000 advised the Respondent that this correspondence would be treated as a Response and would be submitted to the Panel.
On October 27, 2000, WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand, to serve as Sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On October 27, 2000, the Honorable Sir Ian Barker QC advised his acceptance and forwarded to WIPO Center his statement of impartiality and independence. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.
On November 8, 2000, WIPO Center forwarded to the Honorable Sir Ian Barker QC by courier the relevant submissions and the record. These were received by him on November 20, 2000. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel would have been required to forward its decision by November 22, 2000.
The Panel has independently determined and agrees with the assessment of WIPO Center that the Amended Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant owns and operates the "21" Club Restaurant in New York. This establishment has been in the same location and has been known by the name "21" Club since 1930.
Over the years the restaurant has acquired a reputation as an establishment patronized by the "rich and famous", both international and American. It is seen as one of the best-known restaurants in the western world, seeking to achieve high standards of cuisine and service. It has been featured by the name "21" Club in movies, feature articles and books. It has spent substantial amounts on promotion and advertising of the restaurant.
The Complainant owns registered service marks for "21" Club:
(a) United States: 955,398 dated March 13, 1973 for restaurant services in Class 42 (first use 1968).
(b) European Community trademark (CTM) No. 116,103, dated January 10, 1998 for various goods and services in Classes 16, 35 and 42.
The Complainant uses the name depicted in these registrations "21" Club in connection with the goods and services stated therein.
The Complainant also owns and uses a further family of United States trademark registrations using the expressions "21" and "The 21 Club" for restaurant services and various accessories, such as towels, tote bags, table linen, glassware, coffee mugs etc. as detailed in the Amended Complaint.
5. Parties Contentions
The Complainant submits that the Respondent registered and is using its mark, "21" Club, in bad faith. It claims that:
(a) The domain name is identical to its marks.
(b) The Respondent has no rights or legitimate interest in respect of the domain name.
(c) Registration and use in bad faith is shown by the lack of any apparent rights or legitimate interest.
(d) The Complainants "21" Club restaurant is "famous" and entitled to a broad scope of protection under United States law (Federal Dilution Act, 15 USC 1125(c)) and Article 6bis of the Paris Convention.
The Respondent in his emails of on September 27, 2000 stated:
(a) He had not heard of the Complainant when he registered the domain name.
(b) He has used the name for a long time: "I do it very well".
(c) "Lots of people in China know it and always view my home page".
(d) If the Complainant wants the domain name, he would consider it, but requires compensation.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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".
The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:
- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- That the Respondent has no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used by the Respondent in bad faith.
The domain name "21club.net" is identical to the Complainants registered mark. The Panel so decides.
Likewise, the Panel decides that the Respondent has no rights or legitimate interests in the domain name at issue. The Respondent has never suggested to the contrary. The Panel so decides. The Respondent has offered no evidence that it is known by the name.
Paragraph 4(b) of the ICANN Policy states:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Panel is unable to infer that the domain name was registered in bad faith. The reputation of "21" Club may be extensive in the United States and possibly in Europe and other parts of the western world. The Panel cannot conclude that it is a name with such worldwide connotations that it would have been known in China at the date of registration of the domain name. Had it been a name like, say, Coca-Cola or MacDonalds, the inference of bad faith registration would be easy.
"21" Club is a combination of a number and a generic name. It is not such a well-known name that worldwide recognition of it can be presumed, such as in some WIPO cases (such as "Wal-Mart", "Sony" and "Singapore Airlines"). Nor can opportunistic cybersquatting be presumed as in the case of TV Globo Ltda. v. Globoesportes.com (WIPO Case D2000-0791), where a registrant in India registered a domain name in the Portuguese language identical to a Brazilian television operators trademark in the Portuguese language. Nor is this a case such as Bank of New Zealand v. Xuhui Dai (WIPO Case D2000-0988) where a registrant in China registered "bankofnewzealand.com".
The case is similar to VZ VermögensZentrum AG v. Anything.com (WIPO Case D2000-0527), where a 3-member panel was unable to infer that the mark "VZ", which was used for a financial services company in Switzerland and Germany, was so well-known internationally that a domain name registrant in the Cayman Islands could be presumed to have known of its existence.
Bad faith use can probably be inferred from the Respondents intimation that he would sell the name. However, there is his assertion that he did not know of the Complainant before he received the Complaint, which makes the proof of bad faith registration more difficult. The Panel notes that there was no "cease and desist" letter to the Respondent. Although such a letter is not strictly necessary, replies and/or subsequent conduct by a Respondent can often help to prove or infer bad faith registration.
For all the reasons discussed above, the Panel is unable to find that the domain name "21club.net" has been registered by the Respondent in bad faith. Mere suspicion is not enough.
7. Legal Considerations
Although entitled to consider principles of law deemed applicable, the Panel finds it unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a wide variety of WIPO Panelists under the ICANN Policy provides a fruitful source of precedent. Attempts to hi-jack names where a trademark has been registered and where the Respondent knew or must have known about the mark have met with little success. The fact that, under United States law cited by counsel for the Complainant, the Complaint might succeed in litigation in that country, cannot be determinative of a Complaint. The Panel must not adopt the specific law of any nation in reaching a decision. It can often call upon Court precedents to assist it in, say, determining confusing similarity. But the Panel must operate within the criteria laid down by the Policy. A rejection of a Complaint does not mean that a Complainant would fail in infringement of trademark proceedings.
The Panel declines to order that the registration of the domain name "21club.net" be transferred to the Complainant.
Hon. Sir Ian Barker QC
Dated: November 22, 2000