Emerson Electric Co. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1602001659000
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonsys.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2016; the Forum received payment on February 1, 2016.
On February 2, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <emersonsys.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 February 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 2016 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@emersonsys.com. Also on February 3, 2016, the 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 March 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant has rights in the EMERSON mark based on registration of the mark with numerous trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,316,533, registered January 29, 1985). Respondent’s disputed <emersonsys.com> domain is confusingly similar to the EMERSON mark as the domain includes the mark in its entirety and merely adds a generic term related to Complainant’s business, “sys”, which is an abbreviation for “system.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been affiliated with Complainant, been given permission to use Complainant’s trademark, or been commonly known by the disputed domain name. Respondent’s use of the disputed domain name as a parked page containing links to third party webpages is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain is being offered for sale through an advertisement on the WHOIS data page for the disputed domain, which is further evidence of no rights or legitimate interests.
Respondent registered and used the <emersonsys.com> domain name in bad faith. Respondent’s offer for sale in excess of out-of-pocket costs is evidence of Policy ¶ 4(b)(i) bad faith. Respondent’s history of bad faith has resulted in over twenty adverse decisions, suggesting bad faith in the instant case. Respondent’s use of the disputed domain name indicates an intent to disrupt the business of Complainant, a competitor, and Respondent presumably nets commercial gain through its inclusion of click-through links, demonstrating Policy ¶¶ 4(b)(iii) and (iv) bad faith. Respondent’s blatantly false WHOIS information and actual and/or constructive knowledge of Complainant’s rights indicate bad faith under a non-exclusive analysis of Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <emersonsys.com> 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(f), 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.”).
Supported Language Request
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Finnish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may weigh the relative time and expense in enforcing the Finnish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant argues that Respondent’s domain name URL and resolving webpage is in English. Complainant contends that Respondent must, hence, understand English. Complainant maintains that it would require substantial cost and time to translate the documents from English to Finnish.
Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, including Respondent’s lack of participation in this proceeding, the Panel decides that the proceeding should be in English.
Complainant claims that its rights in the EMERSON mark stem from registration of the mark with the USPTO (e.g., Reg. No. 1,316,533, registered January 29, 1985). Panels have routinely held that registration of a domain with the USPTO is sufficient to demonstrate rights in a 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)). The Panel finds Complainant’s registration with the USPTO is sufficient to demonstrate rights in the EMERSON mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain name <emersonsys.com> is confusingly similar to the EMERSON mark in which Complainant asserts rights. The disputed domain include the entire EMERSON mark, adds the generic term “sys”, and the generic top level domain (“gTLD”) “.com.” Panels consistently find that the gTLD “.com” is not relevant when conducting an analysis of confusing similarity under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Panels have also held that the addition of a generic term to a mark does not distinguish a domain from the mark. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds non-distinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s EMERSON mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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.”).
Complainant argues that Respondent has not been affiliated with Complainant, been given permission to use Complainant’s trademark, or been commonly known by the disputed domain name. The WHOIS information associated with the disputed domain names indicates that Respondent registered the domains using the name “Hulmiho Ukolen / Poste restante”. Past panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Given the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent’s use of the domain, to resolve to a website displaying links to third party webpages, and Respondent’s willingness to sell the domain in excess of out of pocket costs, indicate that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The disputed <emersonsys.com> domain displays various click-through advertisements with titles such as “Electricity,” “Instrumentation Jobs,” and “Job Vacancies Jobs.” Panels have held that using a disputed domain to hyperlink to third party webpages is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)). The WHOIS information lists the disputed domain name for sale at a price of $4,750. Panels have held that a respondent’s general offer to sell a disputed domain name in excess of out of pocket cost is indicative of a lack of legitimate rights or interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). The Panel therefore finds that Respondent’s use of the domain name does not fall within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Complainant contends that Respondent’s offer to sell domain name in excess of out-of-pocket costs is evidence of bad faith. The Panel agrees and finds that Respondent has demonstrated bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Complainant claims that Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions decided against it. Complainant cites the following cases to demonstrate this pattern: Gulf DTH LDC v. WhoIs Privacy_Protection / Hulmiho Ukolen, Autodesk, Inc. v. Domain Admin / Hulmiho Ukolen, Poste restante, Kellogg North America Company v. Hulmiho Ukolen / Poste restante, and Apple Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois Protection. The Panel finds these cases are sufficient to demonstrate a history of bad faith registration and use of domain names, and therefore finds that Respondent registered and is using the <emersonsys.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant claims that Respondent is using the domain name to compete with and disrupt Complainant’s business by offering products that compete with Complainant’s, and that this is evidence of bad faith. Respondent’s domain name resolves to websites that display hyperlinks to third party competitors of Complainant. Panels have found bad faith disruption and competition where a domain was used to divert Internet users to competing websites. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel therefore finds Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s use of the EMERSON mark in the domain demonstrates an intent to confuse and attract internet users to the disputed domain for Respondent’s commercial gain. Respondent uses the disputed domain <emersonsys.com> to resolve to a website that displays hyperlinks to third party competitors of Complainant. Panels have found bad faith where a respondent used domains that are confusingly similar to another’s mark for the purposes of attracting Internet users in the hopes of netting pay-per-click fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel finds that Respondent has created a likelihood of confusion through the registration and use of the domain name from which Respondent profits, and therefore finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent’s having provided false WHOIS information is evidence of bad faith. The provided WHOIS information states the Registrant City as “Finland,” the Registrant Street as “Helsinki main post office,” and the Registrant Phone as “1.234567890” amongst other obvious false entries. Past panels have found bad faith in instances where the registrant of a domain name provided false information to the registrar. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Therefore, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the EMERSON mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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").
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <emersonsys.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 4, 2016
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