Micro Motion, Inc. / Rosemount, Inc. v. Cong Ty Tnhh Netek
Claim Number: FA2008001907088
Complainant is Micro Motion, Inc. / Rosemount, Inc. (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado. Respondent is Cong Ty Tnhh Netek (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rosemount-micromotion.com>, registered with P.A. Viet Nam Company Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2020; the Forum received payment on August 3, 2020.
On August 4, 2020, P.A. Viet Nam Company Limited confirmed by e-mail to the Forum that the <rosemount-micromotion.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 10, 2020, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of August 31, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rosemount-micromotion.com. Also on August 10, 2020, the Vietnamese Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings in Vietnamese. Complainant did not submit a foreign language complaint, but argues in its complaint that the proceedings should be conducted in English, as requiring Complainant to translate its documents into Vietnamese would unfairly result in additional expense and time in the proceedings, especially because it appears Respondent is familiar with English. Complainant concludes Respondent is likely familiar with English because the disputed domain name’ resolving website is in English, and a google search of Respondent provided a website with instructional youtube videos and resources written in English. Respondent also responded to an email from the FORUM in English. See Respondent Correspondence Email.
After review of the applicable rules on language of the proceedings under the UDRP the panel finds as follows
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter, Micro Motion, Inc. and Rosemount, Inc.. The former, Micro Motion, Inc., owns the MICRO MOTION trademark and the latter, Rosemount, Inc.., owns the ROSEMOUNT trademark. The Complainants jointly rely on both trademarks to prove their contentions.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119, (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants because they are both subsidiaries of the same parent company. The Panel will therefore treat them as a single entity in this proceeding. However, for reasons of convenience, in this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant has rights in the MICRO MOTION and ROSEMOUNT marks through its multiple registrations with the United States Patent and Trademark Office (“USPTO”). (MICRO MOTION e.g. Reg. 2,779,190, registered Nov. 4, 2003; Reg. 1,283,154 registered Jun. 26, 1984); (ROSEMOUNT e.g. Reg. 903,838, registered Dec. 8, 1970; Reg. 2,404,458, registered Nov. 14, 2000). See Amend. Compl. Ex. B-1 and B-2. Respondent’s <rosemount-micromotion.com> domain name is confusingly similar to Complainant’s MICRO MOTION and ROSEMOUNT marks as it incorporates the marks in their entirety and adds a hyphen to space them along with a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <rosemount-micromotion.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its ROSEMOUNT or MICRO MOTION marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant to divert internet users to the disputed domain name in order to sell counterfeit products or sell Complainant’s products without authorization.
Respondent registered and uses the <rosemount-micromotion.com> domain name in bad faith by attempting to pass off as Complainant in order to divert internet users seeking Complainant’s services to a website where Respondent sells Complainant’s products without authorization or are counterfeit products.
B. Respondent
Respondent did not submit a timely response in this proceeding, but on August 12, 2020 sent an email to the FORUM stating that it had received the email notification, that it had not used the domain name, and had asked the domain name provider in Vietnam to “remove the domain name”.
1. Complainant is a United States company that manufactures and sells flow meters in the United States and throughout the world and is well-known within the liquid and gas flow and density measurement industry as a manufacturer of these products.
2. Complainant has established its trademark rights in the MICRO MOTION and ROSEMOUNT marks through its multiple registrations with the United States Patent and Trademark Office (“USPTO”). (MICRO MOTION e.g. Reg. 2,779,190, registered Nov. 4, 2003; Reg. 1,283,154 registered Jun. 26, 1984); (ROSEMOUNT e.g. Reg. 903,838, registered Dec. 8, 1970; Reg. 2,404,458, registered Nov. 14, 2000).
3. Respondent registered the <rosemount-micromotion.com> domain name on June 1, 2020.
4. Respondent has used the domain name to attempt to pass itself off as Complainant so as to divert internet users to the disputed domain name in order to sell counterfeit products or sell Complainant’s products without authorization.
Paragraph 15(a) of the Rules instructs this 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MICRO MOTION and ROSEMOUNT marks through its multiple registrations with the USPTO. (MICRO MOTION e.g. Reg. 2,779,190, registered Nov. 4, 2003; Reg. 1,283,154 registered Jun. 26, 1984); (ROSEMOUNT e.g. Reg. 903,838, registered Dec. 8, 1970; Reg. 2,404,458, registered Nov. 14, 2000). See Amend. Compl. Ex. B-1 and B-2. Registration with the USPTO is generally sufficient to demonstrate rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROSEMOUNT or MICRO MOTION marks. Complainant argues Respondent’s <rosemount-micromotion.com> domain name is confusingly similar to Complainant’s ROSEMOUNT and MICRO MOTION marks as it incorporates both marks in their entirety, spaces them with a hyphen, and adds the “.com” gTLD to the end of the marks. Per Policy ¶ 4(a)(i), a domain name using multiple marks with a hyphen as a space and a “.com” gTLD is generally considered confusingly similar to the marks it incorporates. See Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group, FA 1784135 (Forum June 8, 2018) (finding the domain name was confusingly similar to the complainant’s mark where “[t]he only difference between the Domain Name and the Complainant’s trademarks is the mere addition of ‘.com’ and placement of a hyphen between the elements of the BIDVEST and 3663 marks.”). The disputed domain name lists Complainant’s ROSEMOUNT mark separated from Complainant’s MICRO MOTION mark with a hyphen and followed by the “.com” gTLD. Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s ROSEMOUNT and MICRO MOTION trademarks and to use them in its domain name which does not negate the confusing similarity between the domain name and the trademarks;
(b) Respondent registered the <rosemount-micromotion.com> domain name on June 1, 2020.
(c) Respondent has used the domain name to attempt to pass itself off as Complainant so as to divert internet users to the disputed domain name in order to sell counterfeit products or sell Complainant’s products without authorization;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent lacks rights or legitimate interests in the <rosemount-micromotion.com> domain name, as it is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its ROSEMOUNT and MICRO MOTION marks in the disputed domain name. Under Policy ¶ 4(c)(ii), in the absence of a response, relevant WHOIS information can demonstrate that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies Respondent as “CONG TY TNHH NETEK”. See Amend. Compl. Ex. C; see also Registrar Verification Email. Additionally, nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use its marks in the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <rosemount-micromotion.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name’s resolving website to sell tools related to Complainant’s business and displays both of Complainant’s marks as well as the mark of Complainant’s parent company. Using a disputed domain name to pass off as a complainant and selling counterfeit products, or selling complainant’s products without authorization is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the disputed domain name’s resolving website, which displays tools for sale along with the ROSEMOUNT, MICRO MOTION marks, as well as Complainant’s parent company’s EMERSON ELECTRIC mark. See Amend. Compl. Exs. D-1 through D-3. Complainant argues that Respondent is attempting to insinuate a relationship between Complainant and Respondent and argues that it is unclear whether the products sold on the resolving website are genuine or counterfeit. As the Panel agrees, it finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and has been used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <rosemount-micromotion.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. It is generally considered bad faith under Policy ¶¶ 4(b)(iii) and (iv) to register and use a disputed domain name to pass off as a complainant in order to divert internet users from the complainant’s website to a website where it sells either complainant’s products without authorization or sell counterfeit products. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). The Panel may recall Complainant’s screenshots of the disputed domain name’s resolving website, which sells tools that Complainant also produces, and displays both Complainant’s and its parent company’s marks. See Amend. Compl. Exs. D-1 through D-3. Complainant argues Respondent is attempting to insinuate a relationship between Complainant and Respondent for commercial gain by diverting users seeking Complainant’s tools to its own website, where it is unclear whether the products sold are counterfeit or genuine tools sold without Complainant’s authorization. As the Panel agrees, it may find Respondent uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rosemount-micromotion.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 9, 2020
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