Honeywell International Inc. v. Juphoon System Software Co., Ltd. / Bob Liu
Claim Number: FA1605001676061
Complainant is Honeywell International Inc. (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, USA. Respondent is Juphoon System Software Co., Ltd. / Bob Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <honeywell.cloud>, registered with Name.com, Inc.
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.
Eleni Lappa, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2016; the Forum received payment on May 20, 2016.
On May 24, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <honeywell.cloud> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 31, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@honeywell.cloud. Also on May 31, 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 June 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eleni Lappa, 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
i. Preliminary Issue – Consent to Transfer
Complainant initially sought relief for its Complaint through a Uniform Rapid Suspension (URS) proceeding. See Complaint’s Attached Exhibit D (FA1603001666143). During the URS proceeding, Leo Lv from email address leo.lv@juphoon.com communicated with Forum and Complainant that “I think our colleague bought the wrong domain name. Honeywell is a great company, as well as we respect the trademark of Honeywell. We can transfer the domain to Honeywell follow the program.” See Complaint’s Attached Exhibit E. Complainant presents in this UDRP proceeding that this correspondence demonstrates Respondent’s consent to the transfer of the <honeywell.cloud> domain name. Complainant was successful in the URS proceeding and the use of the domain name was suspended as the result.
Although Respondent has neither corresponded with the Forum, nor filed a Response in the present UDRP proceeding, Complainant maintains that Respondent has consented from its written correspondence during the URS proceeding, to transfer the <honeywell.cloud> domain name to Complainant. Complainant asks the panel to forego UDRP analysis as the parties desires are aligned in this matter.
Under section “[c.] Respondent’s Bad Faith Activities,” Complainant approves of what it believes is Respondent’s consent to transfer and asks the Panel to forego traditional UDRP analysis and order the transfer.
ii. Complainant’s factual contention
Complainant uses the HONEYWELL mark to promote and sell, amongst other things, cloud-based computing products. Complainant has registered this mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,174,491, registered July 17, 2012). Respondent’s <honeywell.cloud> domain name is confusingly similar to Complainant’s HONEYWELL mark as it incorporates the entire mark while affixing the generic top-level domain (“gTLD”) “.cloud.”
Respondent has no rights or legitimate interests in the disputed domain. Respondent is not commonly known by the <honeywell.cloud> domain name.
B. Respondent
Respondent failed to submit a Response in the present proceeding. The Panel notes that the disputed <honeywell.cloud> domain name was registered on February 23, 2016.
Firstly, in relation to Complainant’s assertion that the Panel should forego UDRP analysis as the parties’ desires are aligned in this matter, the Panel finds that it should analyze the case under the elements of the UDRP, because the present proceeding is a separate proceeding to the URS, under different rules, with different type of relief sought, and the consent offered by Respondent during the URS proceeding has not been re-confirmed in the present proceeding, by Respondent, who in fact has submitted no Response in this matter for the Panel’s review. Moreover the Panel finds that the “consent-to-transfer” approach is at times opted by cybersquatters as a means to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that: Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. Therefore, in view of the above and the specific facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Secondly, in relation to Complainant’s activities and prior rights, the Panel takes into account the Complaint and Exhibits submitted by Complainant and notes that Complainant asserts that it is an internationally active company, via among else its website www.honeywell.com, has been active in cloud based services for a number of years, owns various prior trademark registrations for the name Honeywell, such as, among else, US trademark registration number 4,174,491 “HONEYWELL” and proactively protects its rights on the name “HONEYWELL” thus acquiring goodwill associated with said trademark (which also coincides with its company name).
Respondent has submitted no Response and thus has offered no factual or legal contribution to the present proceeding.
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 (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 uses the HONEYWELL mark to promote and sell, amongst other things, cloud-based computing products. Complainant submits evidence showing its registration of the HONEYWELL mark with the USPTO (Reg. No. 4,174,491, registered July 17, 2012). See Compl., at Attached Ex. C. Panels have decided that the registration of a mark with the USPTO is sufficient to establish Policy ¶ 4(a)(i) rights for a complainant in a mark, even where the respondent operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). As such, the Panel recognizes Complainant’s rights under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <honeywell.cloud> domain name is confusingly similar to its HONEYWELL mark. Complainant argues that the disputed domain incorporates the entire HONEYWELL mark, save for the affixation of the gTLD “.cloud.” Panels have decided that the affixation of a gTLD is necessary to form a valid domain name and, therefore, is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent’s domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel notes that 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 (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 (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.”).
It is Complainant’s position that Respondent is not commonly known by the <honeywell.cloud> domain name. Complainant directs the Panel’s attention to the WHOIS information in Attached Exhibit H, which identifies “Bob Liu of Juphoon System Software Co., Ltd.” as the registrant of the disputed domain name. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <honeywell.cloud> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant does not make any additional arguments under Policy ¶ 4(a)(ii) for the Panel’s consideration. However, in Complainant’s URS Complaint, it is noted that the <honeywell.cloud> domain name was inactively held before suspension occurred. See Compl., at Attached Ex. D. The Panel takes this evidence into consideration and notes that panels have consistently held that there is a lack of bona fide offering of goods or services, or a legitimate noncommercial or fair use, where there is no active use of the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Therefore, the Panel finds that Respondent’s lack of use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant asks the Panel to recognize Respondent’s consent to transfer and Complainant’s acceptance of said consent and to allow the transfer to go forward.
Complainant has made no additional arguments under its Policy ¶ 4(a)(iii) section in its Complaint. The Panel takes into consideration Complainant’s URS Complaint, provided in Complainant’s Attached Exhibit D, and notes that additional bad faith arguments were made in that proceeding. Complainant argued that Respondent registered and used the disputed domain name in bad faith. In Complainant’s Attached Exhibit D, it argued that Respondent’s bad faith was demonstrated by its “full knowledge and intent that some Internet users seeking to find Complainant would instead be misled into encountering Respondent’s website.” See Compl., at Attached Ex. D. Precedent holds that using an identical or confusingly similar domain name to divert Internet users from Complainant to Respondent constitutes bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Accordingly, the Panel finds that Respondent registered and was using the domain in bad faith under Policy ¶ 4(a)(iii).
While Complainant does not argue bad faith because the <honeywell.cloud> domain name does not resolve to an active website, the Panel holds that the absence of any meaningful use of this domain name suggests bad faith. The Panel believes that the domain name resolved to an inactive website and finds that such inactivity suggests Policy ¶ 4(a)(iii) bad faith use and registration. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel takes into account all of the above and holds that bad faith registration and use has been established under 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 <honeywell.cloud> domain name be TRANSFERRED from Respondent to Complainant.
Eleni Lappa, Panelist
Dated: July 9, 2016
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