Norgren Inc. v. dnsprotect
Claim Number: FA1511001647283
Complainant is Norgren Inc. (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is dnsprotect (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sinorgren.com>, registered with Guangdong JinWanBang Technology Investment 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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2015; the Forum received payment on November 16, 2015. The Complaint was received in both Chinese and English.
On November 24, 2015, Guangdong JinWanBang Technology Investment Co., Ltd. confirmed by e-mail to the Forum that the <sinorgren.com> domain name is registered with Guangdong JinWanBang Technology Investment Co., Ltd. and that Respondent is the current registrant of the name. Guangdong JinWanBang Technology Investment Co., Ltd. has verified that Respondent is bound by the Guangdong JinWanBang Technology Investment 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 November 30, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 21, 2015 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@sinorgren.com. Also on November 30, 2015, 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 December 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
A. Complainant
Complainant has rights in the NORGREN mark based on registration of the mark with multiple trademark agencies throughout the world including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 950,639, registered January 16, 1973). See Compl., at Attached Annex C (page 10/11). Respondent’s domain <sinorgren.com> is confusingly similar to the NORGREN mark in which Complainant has rights. The disputed domain merely adds the letters “si” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain, to use Complainant’s NORGREN marks and seemingly sell Complainant’s and Complainant’s competitors goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent has registered and is using the disputed domain in bad faith. Respondent use of Complainant’s NORGREN marks at the website that resolves from the domain disrupts Complainant’s business. Further, Respondent’s use of a confusingly similar domain and the NORGREN marks indicates an attempt to confuse and attract internet users for commercial gain. Finally, Respondent’s use of Complainant’s marks at the resolving domain demonstrates that Respondent had knowledge of the NORGREN marks at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain was created on September 11, 2015.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent engaged in bad faith use and registration of the disputed domain name.
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.
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 the disputed domain name is confusingly similar to the Complainant’s registered trademark. The registration adequately evidences Complainant’s interest in and to the registered trademark. The disputed <sinorgren.com> domain name is confusingly similar to the NORGREN mark in that the disputed domain appears to differ from the NORGREN mark through the addition of the letters “si” and the gTLD “.com.” These additions do not distinguish the disputed domain name from the NORGREN mark.
Therefore, the Panel finds that the <sinorgren.com> disputed domain name is confusingly similar to the NORGREN mark in which Complainant asserts rights pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the disputed domain name indicates that Respondent is using a privacy service to shield its identity. See Compl., at Attached Annex B. There does not appear to be any other evidence in the record leading to the conclusion that Respondent is commonly known by the disputed domain name.
Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further persuasively argues that Respondent’s use of the disputed domain, to use Complainant’s NORGREN marks and seemingly sell Complainant’s and Complainant’s competitors goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name apparently resolves to a website that prominently uses the NORGREN mark and appears to sell Complainant and Complainant’s competitors’ goods. See Compl., at Attached Annex D. Using a complainant’s mark to sell complainant’s or a complainant’s competitors’ goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Accordingly, the Panel finds that Respondent’s use of <sinorgren.com> does not fall within the permitted uses of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) and that the Respondent, therefore, lacks any rights or legitimate interests in or to the disputed domain name.
Complainant first claims that Respondent’s use of the NORGREN marks at the website that resolves from the disputed domain name disrupts Complainant’s business. Respondent’s domain resolves to a website that prominently displays the NORGREN mark and sells Complainant’s products and products of Complainant’s competitors. See Compl., at Attached Annex D. Bad faith is established when a respondent has sold a complainant’s and a complainant’s competitors’ goods on a website prominently using a complainant’s marks. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Therefore, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant next claims that Respondent’s use of a confusingly similar domain and the NORGREN marks indicates an attempt to confuse and attract internet users for commercial gain. Again, Respondent appears to use the disputed domain name to sell Complainant’s goods and those of Complainant’s competitors. See Compl., at Attached Annex D. The Respondent acts in bad faith where it commercially profited from sale of a complainant’s goods through use of a domain name that is confusingly similar to a complainant’s marks. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
As there is no evidence in the record to counter these reasonable assertions of the Complainant, the Panel finds that Respondent is commercially profiting from exploiting the confusing similarity between the disputed domain and the NORGREN mark. Therefore, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant lastly contends that in light of Respondent’s extensive use of the NORGREN mark at the website that resolves from the disputed domain, it is inconceivable that Respondent could have registered the <sinorgren.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant. However, the Panel agrees with Complainant in that Respondent must have had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). Again, with no evidence to the contrary, it is reasonable to assume actual knowledge of Complainant’s rights in and to the trademark NORGEREN and presume that it would be extremely unlikely for the Respondent to land on the disputed domain name out of coincidence.
As such, the Panel finds that the Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <sinorgren.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: December 29, 2015
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