A Domain Name Dispute: Huntsman v. Alibaba

[By Dongtao Li]

A.  Basic Information

The Complainant is HUNTSMAN INTERNATIONAL LLC(Add: 500 HUNTSMAN WAY, SALT LAKE CITY, UTAH 84108, U.S.A.)

The Respondent is Alibaba (China) Network Technical Co., Ltd.

The domain name that is the subject of this Complaint is < chemicalhuntsman.cn > that is registered on February 17, 2011 by the Respondent.

The case was resolved at the CIETAC Domain Name Dispute Resolution Center on November 21, 2011. The Panelist is Dongtao Li.

B.Factual Background

The Complainant asserted it is a global manufacturer and marketer of differentiated chemicals and had established 7 branch companies and affiliations in China(The Complainant brought business licenses as evidence).

The Complainant had traded under the name < HUNTSMAN > since March 23, 1999, the day the company was established. After years of use and advertisements, this trade name is well known in the relevant market place.

In addition, the Complainant also registered 4 trademarks in China as follows:

registered number

trademark

class

effective date

1437094

HUNTSMAN

1

1999.8.28-2020.8.27

8387878

HUNTSMAN

2

2011.6.28-2021.6.27

3649372

亨斯迈

1

2005.5.21-2015.5.20

8387876

亨斯迈

2

2011.7.14-2021.7.13

“亨斯迈” is the Chinese transliteration of the English trademark “HUNTSMAN”.

The original registrant of No. 3649372 and No. 1437094 trademarks is Huntsman Group Intellectual Property Holdings Corporation.

The Complainant has filed applications to the Trademark Office of PRC for assignments of the two trademarks. Now the applications are under process of approval.

The Complainant registered the domain name <huntsman.com> under the trade name and trademark < HUNTSMAN > on October 22, 1997.

The disputed domain name is directed to the website www.chemicalhuntsman.cn.

The website owner is “JINAN HUNTSMAN CHEMICAL.LTD.”

This company produced the same and similar goods as those listed at the registration of No. 3649372 and No. 1437094 trademarks.

But the Complainant couldn’t find this company at the website of the Administration of Industry and Commerce (the registration office). It appears to be an illegal company.

C.  The Complainant’s contentions

The Complainant is the real owner of “HUNTSMAN” and entitled to the prior rights.

In the domain name <chemicalhuntsman.cn>, “.cn” is a ccTLD and “chemical” is a descriptive word commonly used in the public domain for Chemical industry and is not distinctive.

The “huntsman” in the disputed domain name is the relevant part and identical to the Complainant’s No. 3649372 and No. 1437094 trademarks,

So, the disputed domain name shall be transferred to the Complainant because it is confusingly similar to the Complainant’s legal interests and the activities of the Respondent are in bad faith.

D.  The Response

The Respondent did not file a Response to the Complainant in the time limits of Center and failed to provide any evidence to rebut the Complainant’s contentions.

E.  The Dispute Resolution Policy

According to Article 8 of CNNIC Domain Name Dispute Resolution Policy (CNDRP) states that support of a Complainant against a registered domain name is subject to the following conditions:  

  1. The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests; 
  2. The disputed domain name holder has no right or legitimate interest with respect to the domain name or major part of the domain name;  
  3. The disputed domain name holder has registered or is being used the domain name in bad faith.

It should be noted that in order to succeed in an arbitration proceeding under the CNNIC Domain Name Dispute Resolution Policy (CNDRP), it is necessary for the Complainant to prove that all three (3) elements are present.

F.  Opinion

In this case, the Administrative Panel finds that the relevant part of this domain name is <HUNTSMAN> and is identical to the 4 “huntsman” trademarks.

The Complainant is still not entitled to any prior rights in this case because:

  1. The Complainant is not the owner of the No. 3649372 and No. 1437094 trademarks;
  2. Registrations of the No. 8387878 and No. 8387876 trademarks are after the registration of the disputed domain name. The Complaint is not supported by the registrations No. 8387878 and 8387876 because the period of validity of a registered trademark is counted from the date of approval of the registration and because the domain name registration policy is first come, first serve;
  3. The Complainant failed to prove this trade name had been well known in the market place after years of use and advertisements, simply bringing business licenses and a domain name registration certificate is insufficient.

G. Decision

The Administrative Panel rejects the Complainant’s request because it failed to prove that it was entitled to any prior rights according to the Article 8(i) of CNDRP.

 

IP: