Milwaukee Electric Tool Corporation v. chen jiajin
Claim Number: FA2012001925919
Complainant is Milwaukee Electric Tool Corporation (“Complainant”), represented by Thomas Agnello of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is chen jiajin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <miltoolsus.com>, registered with Bizcn.com, Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 21, 2020; the Forum received payment on December 21, 2020.
On January 5, 2021, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <miltoolsus.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 January 12, 2021, the Forum served the Complaint and all Annexes, including a Chinese Language Written Notice of the Complaint, setting a deadline of February 1, 2021 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@miltoolsus.com. Also on January 12, 2021, the Chinese Language 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 February 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant did not submit a Chinese Language Complaint, but argues that since the domain name, contact, email, and resolving website are English, Respondent should be presumed to know English. Because the Complainant is a US company which would be unfairly disadvantaged if the proceedings continue in Chinese, the proceedings should continue in English. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
1. Complainant has rights in the MILWAUKEE mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 2,624,843, registered Sep. 24, 2002; Reg. 917,618, registered Aug. 3, 1971).
2. Respondent’s <miltoolsus.com>[i] domain name is confusingly similar to Complainant’s mark as it incorporates an abbreviation of the mark and adds the word “tools”, the acronym “us”, and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <miltoolsus.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use its MILWAUKEE mark in the domain name.
4. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant on the domain name’s resolving website in furtherance of a phishing scheme.
5. Respondent registered and uses the <miltoolsus.com> domain name in bad faith. Respondent attracts internet users for commercial gain by passing off as Complainant in furtherance of a phishing scheme.
6. Additionally, Respondent registered the <miltoolsus.com> domain name with actual knowledge of Complainant’s rights in the MILWAUKEE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MILWAUKEE mark. Respondent’s domain name is confusingly similar to Complainant’s MILWAUKEE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <miltoolsus.com> domain name and that Respondent registered and uses the domain name in bad faith.
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”).
Complainant has rights in the the MILWAUKEE mark through its registrations with the USPTO. (e.g. Reg. 2,624,843, registered Sep. 24, 2002; Reg. 917,618, registered Aug. 3, 1971). Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <miltoolsus.com> domain name is confusingly similar to Complaiant’s MILWAUKEE mark. Under Policy ¶ 4(a)(i), incorporating an acronym of a well known mark, along with a generic or descriptive word describing a Complainant’s business, and a geographic acronym or word, and the “.com” gTLD is generally sufficient in rendering a domain name confusingly similar to a mark. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Respondent’s domain name incorporates “mil”, an abbreviation of Complainant’s MILWAUKEE mark, along with the word “tools”, which relates to Complainant’s business, the geographic acronym “us”, and the “.com” gTLD. Complainant provides documentation that the letters “mil” are an abbreviation for the word “Milwaukee”. Therefore, the Panel holds that Respondent’s <miltoolsus.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <miltoolsus.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues the Respondent is not commonly known by the <miltoolsus.com> domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may show that a Respondent is not commonly known by a domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). The WHOIS of record identifies Respondent as “Chen Jiajin”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use the abbreviation of its MILWAUKEE mark in the <miltoolsus.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <miltoolsus.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <miltoolsus.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a Complainant in furtherance of a phishing scheme is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides screenshots of the <miltoolsus.com> domain name’s resolving website, which features Complainant’s mark and pictures from Complainant’s website. While the website appears to offer Complainant’s products for sale, Complainant argues it is reasonable to infer that Respondent does not sell Complainant’s products, but instead uses this offering to phish for confidential customer information. Thus, the Panel holds that Respondent does not use the <miltoolsus.com> 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <miltoolsus.com> domain name in bad faith for commercial gain. Per Policy ¶ 4(b)(iv), passing off as a Complainant on a domain name’s resolving website to phish for confidential user information is generally considered bad faith. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant has provided evidence that the resolving website of the <miltoolsus.com> domain name which features Complainant’s mark and images from Complainant’s website and what appears to be an online store selling Complainant’s tools, is actually a phishing scheme to collect user credit card information. Therefore, the Panel concludes that Respondent registered and uses the <miltoolsus.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the <miltoolsus.com> domain name with actual knowledge of Complainant’s rights in the MILWAUKEE mark. See G.D. Searle & Co. v. Pelham, FA 117911 (Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”). Because the <miltoolsus.com> domain name incorporates an abbreviated version of Complainant’s MILWAUKEE mark and its resolving website contains numerous pictures of Complainant’s tools and its mark, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the <miltoolsus.com> domain name under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <miltoolsus.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 17, 2021
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