Fastenal Company v. John Ma aka ma jun
Claim Number: FA0906001266592
Complainant is Fastenal
Company (“Complainant”), represented by William Schultz, of Merchant & Gould, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cnfastenal.com>, registered with Xin Net Technology Corporation.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2009.
On June 5, 2009, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cnfastenal.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cnfastenal.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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.
A. Complainant makes the following assertions:
1. Respondent’s <cnfastenal.com> domain name is confusingly similar to Complainant’s FASTENAL mark.
2. Respondent does not have any rights or legitimate interests in the <cnfastenal.com> domain name.
3. Respondent registered and used the <cnfastenal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fastenal Company, is an international supplier
of industrial and construction supplies.
Since 1967, Complainant has operated under the FASTENAL mark. Complainant operates in all fifty states in
the
Respondent registered the <cnfastenal.com> domain name on April 16, 2008. The disputed domain name resolves to a website offering identical, competing products of Complainant’s. Respondent’s website resolving from the disputed domain name is virtually identical in content to one of Complainant’s competitor’s websites.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has not provided evidence it had a valid
trademark registration for its FASTENAL mark at the time Respondent registered
the disputed domain name. However, the
Panel finds a governmental trademark registration is not necessary to establish
rights under Policy ¶ 4(a)(i). Previous panels have determined that a
federal registration is not required so long as the Complainant can establish
common law rights through proof of sufficient secondary meaning associated with
the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant uses
the FASTENAL mark to advertise its industrial and construction supplies both
nationally and internationally.
Complainant has consistently used its mark since 1967. The Panel finds Complainant has
established common law rights in its FASTENAL mark through continuous and
extensive commercial use predating Respondent’s registration of the disputed
domain name under Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v.
Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that
the complainant had demonstrated common law rights in the ATPE mark through
continuous use of the mark in connection with educational services for over
twenty-five years); see also Hiatt v.
personal fan & official site builders : we build great sites, FA 881460
(Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is
unnecessary under Policy ¶ 4(a)(i) in instances where
a mark has gained secondary meaning through extensive commercial use and common
law rights have been established ….”).
Respondent’s <cnfastenal.com> domain name is
confusingly similar to Complainant’s FASTENAL mark. The disputed domain name contains
Complainant’s entire mark and simply adds a geographic identifier “cn,” which
stands for “
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <cnfastenal.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent’s <cnfastenal.com> domain name resolves to a website featuring products that compete with Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant asserts that Respondent is not authorized to use the FASTENAL mark. The WHOIS information identifies Respondent as “John Ma.” Respondent offers no contradicting evidence, and there is no evidence on the record, suggesting that Respondent is commonly known by the <cnfastenal.com> domain name. Complainant asserts that Respondent is not authorized to use the FASTENAL mark. The WHOIS information identifies Respondent as “John Ma.” Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <cnfastenal.com> domain
name to redirect Internet users, interested in Complainant’s products, to
Respondent’s website featuring competing products. Respondent’s website is virtually identical
to one of Complainant’s competitor’s websites.
Respondent’s use of the disputed domain name potentially causes confusion
as to Complainant’s affiliation with the resulting website and could cause Complainant
to lose sales and profits to competitors.
Therefore, the Panel finds Respondent’s use of the disputed domain name
constitutes disruption and evidences bad faith registration and use under
Policy ¶ 4(b)(iii).
See David Hall Rare Coins v.
Furthermore, Respondent is using the confusingly similar disputed domain name to link to a website offering competing goods. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <cnfastenal.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 22, 2009
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