Weatherford/Lamb, Inc. v. zhu jie
Claim Number: FA1206001447704
Complainant is Weatherford/Lamb, Inc. (“Complainant”), represented by Tiffany D. Gehrke of Marshall Gerstein & Borun, Illinois, USA. Respondent is zhu jie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnsonscreen.net>, registered with 35 Technology Co., Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 7, 2012. The Complaint was submitted in both English and Chinese.
On June 21, 2012, 35 Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <johnsonscreen.net> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name. 35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology Co., 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 June 25, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 16, 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@johnsonscreen.net. Also on June 25, 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 July 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
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 <johnsonscreen.net> domain name is confusingly similar to Complainant’s JOHNSONSCREENS mark.
2. Respondent does not have any rights or legitimate interests in the <johnsonscreen.net> domain name.
3. Respondent registered and used the <johnsonscreen.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) trademark registration for the JOHNSONSCREENS and Design mark (Reg. No. 2,853,672 registered June 15, 2004).
Respondent registered the <johnsonscreen.net> domain name on March 19, 2010, and uses it to resolve to a website which sells industrial screening products in direct competition with those of Complainant.
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.”).
The Panel finds that Complainant has rights in the JOHNSONSCREENS mark
through its USPTO trademark registration. Previous panels have found that the registration of a mark with a federal trademark authority is evidence of having rights in that mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Trademark registration confers rights under Policy ¶ 4(a)(i) even when the respondent does not live or operate within the country the mark is registered in. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <johnsonscreen.net> domain name uses Complainant’s mark and merely deletes the last letter, “s,” which does not distinguish the disputed domain name. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). Respondent’s addition of the generic top-level domain (“gTLD”) “.net” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <johnsonscreen.net> domain name is confusingly similar to the JOHNSONSCREENS mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent is not commonly known by the <johnsonscreen.net> domain name. Complainant argues that the WHOIS record for the <johnsonscreen.net> domain name lists “zhu jie,” which does not resemble the <johnsonscreen.net> domain name in any way. Panels have found that the WHOIS record for a disputed domain name is evidence of whether a respondent is or is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the <johnsonscreen.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <johnsonscreen.net> domain name to market its own industrial screening products in competition with those Complainant offers under the JOHNSONSCREENS mark. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), held that the use of a disputed domain name to sell competing products is not a use which is protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). Thus, the Panel finds that Respondent’s use of the <johnsonscreen.net> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
At Respondent’s <johnsonscreen.net> domain name Internet users can purchase goods and services in the industrial screen industry that compete with Complainant’s products. Panels have determined that the registration and use of a disputed domain name to sell competitive products is disruptive. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). The Panel finds that the <johnsonscreen.net> domain name is disruptive to Complainant’s business and thus that Respondent’s registered and uses of the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent uses a confusingly similar domain name to drive traffic to the <johnsonscreen.net> domain name, causing Internet users to incorrectly assume that there is an affiliation with Complainant, and trading off of Complainant’s goodwill. Respondent causes confusion as to the source, sponsorship, or affiliation of the <johnsonscreen.net> domain name for its commercial gain. Therefore, the Panel finds that Respondent registered and is using the <johnsonscreen.net> domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant argues that Respondent’s registration of the confusingly similar domain name more than 100 years after Complainant began using the JOHNSONSCREENS mark indicates that Respondent had constructive and actual knowledge of Complainant's mark and rights, respectively. The Panel finds that Respondent had actual knowledge of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that 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 <johnsonscreen.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 30, 2012
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