NSK LTD. v. DINA MCINTIRE
Claim Number: FA1701001712452
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf LLP, Michigan, USA. Respondent is DINA MCINTIRE (“Respondent”), Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nsk-fag-skf-ntn.com>, registered with eNom, Inc.
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 January 13, 2017; the Forum received payment on January 13, 2017.
On January 16, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <nsk-fag-skf-ntn.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@nsk-fag-skf-ntn.com. Also on January 16, 2017, 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 February 14, 2017, 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.
A. Complainant
Complainant, NSK LTD., uses the NSK mark in conjunction with a wide array of industrial, manufacturing, and automotive vehicle-related components, equipment and parts. Complainant also is a global producer of bearings for use in manufacturing operations. Complainant has rights in the NSK mark based on registration of the mark with the USPTO (e.g., Reg. No. 857,857, registered Oct. 1, 1968). Respondent’s domain name <nsk-fag-skf-ntn.com> is confusingly similar to Complainant’s NSK mark because it incorporates the mark, along with hyphens, three other competing third party brands that also sell bearing products and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <nsk-fag-skf-ntn.com>. Respondent is not commonly known by the domain name based on the WHOIS of record. Further, Respondent’s site offers, promotes, and sells other industrial goods and services which compete with Complainant, which does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <nsk-fag-skf-ntn.com> in bad faith. Respondent’s actions fall squarely within the purview of Policy ¶ 4(b)(iv) because of its clear intent to profit from Internet user confusion and exploit the goodwill associated with Complainant’s NSK mark.
B. Respondent
Respondent failed to 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 <nsk-fag-skf-ntn.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 (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 argues that it 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. Complainant provides numerous United States Patent and Trademark Office registrations for the NSK mark (e.g., Reg. No. 857,857, registered Oct. 1, 1968). Such registrations have been found to confer rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Therefore, the Panel agrees that Complainant has established rights in the NSK mark because it has provided USPTO registrations for the mark.
Further, Complainant argues that the <nsk-fag-skf-ntn.com> is confusingly similar to Complainant’s NSK mark because it incorporates the mark, along with hyphens, three other competing third party brands that also sell bearing products and the “.com” gTLD. Such alterations have been found confusingly similar. See NIKE, Inc., Nike Innovate, C.V., and Google Inc. v. Mattia Lumini / Yykk Snc, FA 1687597 (Forum Sept. 20, 2016) (asserting, where NIKE and GOOGLE were joined as complainants, “[I]t is clear that an objective bystander would conclude that the disputed domain name, by referring to both trademarks and nothing else, is invoking both trademarks and the goods and services provided by the owners of those trademarks. Therefore the Panel agrees with Complainant’s submission that Respondent’s domain name is confusingly similar to the NIKE and GOOGLE marks under Policy ¶ 4(a)(i).”); see also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel agrees that the additions Respondent has made to the NSK mark are insufficient to overcome 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 (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.”).
Complainant argues that Respondent lacks rights/legitimate interests in <nsk-fag-skf-ntn.com>. Complainant claims 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. 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).”). Here, the WHOIS lists “DINA MCINTIRE” as registrant. 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 own commercial site which serves as a “click-through” destination to distributors and sellers of competing bearing products. Competing use has not been considered a demonstration of rights and legitimate interests. 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).
Complainant has proved this element.
Complainant argues that Respondent registered and used <nsk-fag-skf-ntn.com> in bad faith. Complainant reiterates that the domain name has links and content promoting the offering and sale of competing bearings, indicating an attempt to attract Internet users for commercial gain per Policy ¶ 4(b)(iv). Panels have agreed that the sale of competing products may be 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).”). The Panel agrees that such use indicates an attempt to commercially gain in bad faith from causing Internet user confusion under the language of Policy ¶ 4(b)(iv).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nsk-fag-skf-ntn.com> domain name be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 21, 2017
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