NSK LTD. v. cui meng / shijiazhuangpanjingjidianshebeiyouxiangongsi
Claim Number: FA1610001697730
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf LLP, Michigan, USA. Respondent is cui meng / shijiazhuangpanjingjidianshebeiyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nskf-china.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.
Ho Hyun Nahm, Esq. 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 <nskf-china.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@nskf-china.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, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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) Complainant has standing to bring this dispute because it has demonstrable rights in the NSK mark. Complainant uses the mark in connection with industrial, manufacturing, and automotive vehicle-related components, equipment and parts. The <nskf-china.com> domain name is confusingly similar to the NSK mark for the following reasons: “skf” is a third-party brand of bearing products which competes with Complainant and is combined with the NSK mark to create “nskf,” and “China” is a geographic term.
ii) Respondent has no rights/legitimate interests in <nskf-china.com>. 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 disputed domain name as a whole. 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).
iii) Respondent registered and used <nskf-china.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 did not submit a Response. The Panel notes <nskf-china.com> was registered on September 22, 2014.
Complainant failed to establish rights in or to the SKF mark per Policy ¶ 4(a)(i).
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."
Preliminary Issue 1: Supported Language Request
The Panel notes that 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. 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 Chinese 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). Further, the Panel weighs the relative time and expense in enforcing the Chinese 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 directs the Panel’s attention to its Exhibit, which demonstrates that registrant of the disputed domain name uses the resolving website to sell unauthorized bearing products and transacts business in the English language (but it seems the website itself is comprised entirely in a foreign language—presumably Chinese).
Pursuant to UDRP Rule 11(a), although the Panel finds that persuasive evidence has not been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language, after considering the circumstance of the present case and in the absence of any objection to Complainant's language request and Response, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Multiple Marks
The Panel notes that there are two trademarks at issue in the instant case: NSK and SKF. However, SKF has not been joined as a party, and thus has not provided any information asserting rights in the SKF mark in this proceeding. SKF is also identified as a competitor of Complainant. Furthermore, Complainant provides evidence of USPTO registrations for the SKF mark, but alleges no licensing/assignment agreement. Further, Complainant disclaims any relationship to SKF throughout the Complaint, stating, “NSK reiterates that it, Complainant, has no affiliation with SKF and does NOT jointly offer/sell products with SKF.”
The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel agrees that SKF has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <nskf-china.com> domain name. Complainant may claim to have rights to the deletion of the <nskf-china.com> domain name which fully incorporates a brand of Complainant's competitor.
Thus, the Panel dismisses the Complaint because Complainant has failed to establish rights in or to the SKF mark as it was incorporated fully in the <nskf-china.com> disputed domain per Policy ¶ 4(a)(i). Cf. NIKE, Inc. and Nike Innovate, C.V. v. Mattia Lumini and Yykk Snc, FA 1679233 (Forum July 15, 2016) (denying relief because the complainant failed to establish rights in or to the GOOGLE mark per Policy ¶ 4(a)(i) as it was incorporated fully in the <nikegoogle.com> disputed domain). See also Dell Inc. v. Ionel Adrian Nicolae, FA1607001683104 (FORUM August 22, 2016) (denying relief because the complainant failed to establish rights in or to the NVIDIA mark per Policy ¶ 4(a)(i) as it was incorporated fully in the <alienware-nvidia.xyz> disputed domain).
Complainant having not established the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <nskf-china.com> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: November 19, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page