Zweibruder Stahlwarenkontor GmbH LLC v. Jinhody Technology Co. Ltd. / Mr.Wu
Claim Number: FA1202001431390
Complainant is Zweibruder Stahlwarenkontor GmbH LLC (“Complainant”), represented by Theresa Conduah of Alston & Bird LLP, North Carolina, USA. Respondent is Jinhody Technology Co. Ltd. / Mr.Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <led-lenser.cc>, registered with Xin Net Technology Corporation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 27, 2012. The Complaint was submitted in both Chinese and English.
On February 28, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <led-lenser.cc> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 9, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 29, 2012 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@led-lenser.cc. Also on March 9, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Language of the Proceedings
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.
A. Complainant makes the following assertions:
1. Respondent’s <led-lenser.cc> domain name is confusingly similar to Complainant’s LED mark.
2. Respondent does not have any rights or legitimate interests in the < led-lenser.cc > domain name.
3. Respondent registered or used the < led-lenser.cc > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant manufactures LED lights under its LED-LENSER mark.
2. Complainant owns trademark registrations with the German Patent and Trade Mark Office (“GPTMO”) for its LED-LENSER mark (e.g., Reg. No. 30,018,315 registered June 6, 2000).
3. Respondent registered the <led-lenser.cc> domain name on October 11, 2011.
4. Respondent’s <led-lenser.cc> domain name is identical to Complainant’s LED-LENSER mark.
5. The disputed domain name resolve to a website that advertises and promotes counterfeit LED light products in competition with Complainant.
6. Respondent’s registration and use of the <led-lenser.cc> domain name disrupts Complainant’s business.
7. Respondent attempts to profit by creating confusion as to Complainant’s sponsorship of, and affiliation with, the disputed domain name.
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(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.”).
Complainant presents its trademark registrations with the GPTMO for its LED-LENSER mark (e.g., Reg. No. 30,018,315 registered June 6, 2000) to the Panel. In Daimler AG v. Classic Cars (UK) Ltd., FA 1323948 (Nat. Arb. Forum July 1, 2010), and Computop Wirtschaftsinformatik GmbH v. Domain Admin., FA 1394450 (Nat. Arb. Forum Aug. 8, 2011), the panels concluded that a complainant’s registration of its mark with the GPTMO sufficiently demonstrated the complainant’s rights in the mark under Policy ¶ 4(a)(i). In this case, the Panel notes that Respondent resides or operates in China. However, in Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panels held that a complainant may establish rights even if the complainant did not own a trademark registration within the country where the respondent resides or operates. Thus, the Panel concludes that Complainant owns rights in its LED-LENSER mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <led-lenser.cc> domain name contains a combination of the LED-LENSER mark and the country-code top-level domain (“ccTLD”) “.cc.” In Hoffman-La Roche Inc. v. UrProxy Domains, FA 1186034 (Nat. Arb. Forum June 18, 2008), and Sasol Ltd. v. MM Energy Consulting cc, FA 1241959 (Nat. Arb. Forum Feb. 20, 2009), the panels determined that, even after the addition of the ccTLD “.cc,” a disputed domain name remains identical to the complainant’s mark. Therefore, the Panel holds that Respondent’s <led-lenser.cc> domain name is identical to Complainant’s LED-LENSER mark for the purposes of Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel notes neither Complainant nor Respondent makes specific arguments relating to whether or not Respondent is commonly known by the <led-lenser.cc> domain name, aside from one citation that Complainant includes in the Complaint. The Panel may, however, examine the record to determine if there is any evidence that Respondent is commonly known by the domain name. The Panel notes that the WHOIS information identifies “Jinhody Technology Co. Ltd. / Mr.Wu” as the registrant of the disputed domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panels found that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and the lack of any evidence of such a fact in the record. Based on the WHOIS information and the evidence in the record, the Panel finds that Respondent is not commonly known by the <led-lenser.cc> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s <led-lenser.cc> domain name resolves to a website that sells counterfeit versions of Complainant’s LED lights products. Complainant argues that Respondent’s sale of counterfeit products competes with Complainant’s business. In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), and eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panels concluded that the sale of counterfeit versions of a complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Consequently, the Panel determines that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <led-lenser.cc> domain name.
As noted above, Complainant argues that Respondent competes with Complainant’s business by selling counterfeit versions of Complainant’s LED lights products. Complainant further alleges that Respondent’s registration and use of the <led-lenser.cc> domain name for this purpose disrupts Complainant’s business. In Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008), and Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008), the panels held that a complainant’s business is disrupted by a respondent’s registration and use of a disputed domain name for the purpose of selling counterfeit products. Thus, the Panel concludes that Respondent registered and uses the <led-lenser.cc> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent is attempting to commercially benefit from Internet user confusion by selling counterfeit LED lights products at the confusingly similar disputed domain name. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), and H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), prior panels found that a respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion. The Panel agrees with Complainant and the UDRP precedent, and finds that Respondent registered and uses the <led-lenser.cc> domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <led-lenser.cc> domain name be TRANSFERRED FROM Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 25, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page