NSK LTD. v. niu yanqing / Beijing Jia virtue International Trade Co. Ltd.
Claim Number: FA1610001697729
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf LLP, Michigan, USA. Respondent is niu yanqing / Beijing Jia virtue International Trade Co. Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skf-nsk-bearings.com>, registered with HiChina Zhicheng Technology Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2016; the Forum received payment on October 12, 2016.
On October 13, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <skf-nsk-bearings.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 October 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@skf-nsk-bearings.com. Also on October 17, 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 November 8, 20o16, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
PRELIMINARY ISSUE: LANGUAGE
Complainant requests that the language of this administrative proceeding proceed in the English language. Complainant makes this request in light of the Chinese 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. Complainant directs the Panel’s attention to an Exhibit in the record which demonstrates that the registrant of the <skf-nsk-bearings.com> domain name uses the resolving website to sell unauthorized bearing products and transacts business in the English language. Therefore, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been produced by Complainant to show that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant holds numerous United States Patent and Trademark Office registrations for the NSK mark (e.g., Reg. No. 857,857, registered Oct. 1, 1968). Complainant uses the mark in connection with industrial, manufacturing, and automotive vehicle-related components, equipment and parts.
2. The <skf-nsk-bearings.com> domain name[1] is confusingly similar to the NSK mark for the following reasons: “skf” is a third-party brand of bearing products—SKF, USA, Inc.-- which competes with Complainant, and “bearings” is a term descriptive of Complainant’s business.
3. Respondent has no rights/legitimate interests in the <skf-nsk-bearings.com> domain name. Complainant has not authorized Respondent to use the NSK mark or adopt the mark in connection with domain name registrations, and Respondent is not commonly known by the domain name.
4. Further, Respondent uses the domain name to divert Internet users to Respondent’s own commercial site which serves as a “click-through” destination to non-authorized distributors and sellers of actual NSK bearing products. This use does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
5. Respondent registered and uses <skf-nsk-bearings.com> in bad faith. The domain name has links and content promoting the offering and sale of identical NSK-branded bearings, indicating an attempt to attract Internet users for commercial gain per Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NSK mark. Respondent’s domain name is confusingly similar to Complainant’s NSK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skf-nsk-bearings.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skf-nsk-bearings.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights/legitimate interests in the <skf-nsk-bearings.com> domain name. Complainant states that it has not authorized Respondent to use the NSK mark or adopt the mark in connection with domain name registrations, and Respondent is not commonly known by the disputed domain name as a whole. The WHOIS lists “niu yanqing / Beijing Jia virtue International Trade Co. Ltd.” as registrant which supports Complainant’s contention. Panels have looked to WHOIS information where there is no response. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (FORUM Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Therefore, the Panel agrees Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Further, Complainant contends that Respondent uses the domain name to divert Internet users to Respondent’s website which serves as a “click-through” destination to non-authorized distributors and sellers of actual NSK bearing products. Such use does not satisfy the requirements of Policy ¶ 4(c). See General Motors LLC v. MIKE LEE, FA 1659965 (FORUM Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel agrees that Respondent’s use does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <skf-nsk-bearings.com> domain name in bad faith. As mentioned above, the domain name has links and content promoting the offering and sale of identical NSK-branded bearings, indicating an attempt to attract Internet users for commercial gain per Policy ¶ 4(b)(iv). This conduct has been found to constitute bad faith per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (FORUM May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel agrees that such use indicates an attempt to commercially gain from causing Internet user confusion which constitutes bad faith under Policy ¶ 4(b)(iv).
The Panel finds 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 <skf-nsk-bearings.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 14, 2016
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