Shimano Inc. v. Jinqiang Zheng / Nanjing Shimano Bicycle Co., Ltd
Claim Number: FA1107001400926
Complainant is Shimano Inc. (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is Jinqiang Zheng / Nanjing Shimano Bicycle Co., Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shimanocn.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
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.
Judge Ralph Yachnin as Panelist.
On July 31, 2011, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <shimanocn.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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 8, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 29, 2011 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@shimanocn.com. Also on August 8, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shimanocn.com> domain name is confusingly similar to Complainant’s SHIMANO mark.
2. Respondent does not have any rights or legitimate interests in the <shimanocn.com> domain name.
3. Respondent registered and used the <shimanocn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Shimano Inc., operates in the bicycle and bicycle component industries. Complainant has registered its SHIMANO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 989,509 registered July 30, 1974).
Respondent, Jinqiang Zheng / Nanjing Shimano Bicycle Co., Ltd, registered the <shimanocn.com> domain name on July 29, 2010. The disputed domain name resolves to a website which sells folding and toy bicycles for children, saddles, pedals, baskets, tires, and brake cables.
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 claims rights in the SHIMANO mark. Previous panels have determined that registration of a mark with a trademark authority is sufficient to establish rights under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant has provided evidence of its registration of the SHIMANO mark with the USPTO (Reg. No. 989,509 registered July 30, 1974). The Panel finds that this is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Additionally, the fact that Respondent operates in a different country than that in which Complainant’s mark is registered is irrelevant. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant also claims that Respondent’s domain name is confusingly similar to Complainant’s SHIMANO mark for the purposes of Policy ¶ 4(a)(i). Respondent’s <shimanocn.com> domain name wholly incorporates Complainant’s mark, while adding the geographic identifier “cn,” which refers to China, as well as the generic top-level domain (“gTLD”) “.com.” Past panels have agreed that the addition of a common geographic term to Complainant’s mark is insufficient to distinguish a disputed domain name. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”). It is now commonly accepted that the addition of a gTLD is also insufficient to distinguish a disputed domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In light of these findings, the Panel concludes that Respondent’s <shimanocn.com> domain name is confusingly similar to Complainant’s SHIMANO mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
UDRP precedent establishes the requirement for Complainant to present a prima facie case in order to shift the burden to Respondent. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Where Complainant has successfully satisfied its burden and Respondent has failed to produce a Response, as is the case here, some Panels have construed Respondent’s failure to respond as evidence of lacking rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). This Panel, however, will continue to examine the record to determine whether such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <shimanocn.com> domain name for the purposes of Policy ¶ 4(c)(ii). Although Respondent’s WHOIS information lists its name as “Jinqiang Zheng / Nanjing Shimano Bicycle Co., Ltd,” there is no evidence in the record to affirmatively demonstrate that Respondent was in fact commonly known by a name which includes the SHIMANO mark prior to its registration of the domain name. Past panels have found that without that evidence, a respondent is not commonly known by a disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Moreover, Complainant adds that it has never authorized or licensed Respondent to register or use the disputed domain name. In the absence of any evidence to the contrary, the Panel must conclude that Complainant is not commonly known by the <shimanocn.com> domain name for the purposes of Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Complainant further alleges that Respondent’s use of the disputed domain name coincides with neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent uses the disputed domain name to resolve to a website which sells folding and toy bicycles for children, saddles, pedals, baskets, tires, and brake cables. These products are substantially similar to the products offered by Complainant, who also operates in the bicycle and bicycle component industries. The Panel finds that the operation of a strictly competing business at a confusingly similar domain name can constitute neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the disputed domain name to sell competing products disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). Past panels have agreed that the registration of a confusingly similar domain name for the purpose of operating a competing business violates Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). The Panel concludes that Respondent’s use and registration of the <shimanocn.com> domain name to sell competing products disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii).
Finally, Complainant urges that Respondent’s use and registration of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Complainant’s extensive use of its SHIMANO mark in association with the sale of bicycles and bicycle parts has garnered a degree of name recognition and customer goodwill. By selling similar products at a confusingly similar domain name, Respondent seeks to usurp Complainant’s name recognition and goodwill by creating confusion as to Complainant’s affiliation with the site. Respondent aims to benefit from this confusion by selling its products to misdirected Internet users who mistakenly visit Respondent’s site. By wrongly associating its products with Complainant’s, Respondent hopes to realize a commercial gain through increased sales. The Panel determines that this use constitutes bad faith attraction for commercial gain 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shimanocn.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 31, 2011
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