NSK LTD. v. shi hao / shang hai jin ding chuan dong ji xie you xian gong si
Claim Number: FA1701001713797
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf, LLP, Michigan, USA. Respondent is shi hao / shang hai jin ding chuan dong ji xie you xian gong si (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nsk-skf-ntn.com>, registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2017; the Forum received payment on January 23, 2017.
After numerous requests, the Registrar, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn, has not confirmed to the Forum that the <nsk-skf-ntn.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On January 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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-skf-ntn.com. Also on January 30, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a global manufacturer and retailer of industrial bearing products. Complainant uses the NSK mark in conjunction with its business practices. Complainant registered the NSK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 857,857, registered Oct. 1, 1968). See Compl., at Attached Annex A. Respondent’s <nsk-skf-ntn.com> is confusingly similar to Complainant’s NSK mark because it incorporates the mark in its entirety, adding two additional well-known marks (NTN and SKF), hyphens, and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <nsk-skf-ntn.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the NSK mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <nsk-skf-ntn.com> resolves to a webpage displaying Complainant’s NSK mark alongside the marks of companies in direct competition with Complainant. Additionally, the webpage offers for sale competing products and presumably counterfeit versions of Complainant’s products. See Compl., at Attached Annex G.
Respondent registered and is using <nsk-skf-ntn.com> in bad faith. The disputed domain name attempts to attract internet users to Respondent’s website for commercial gain. The disputed domain name also disrupts Complainant’s business by creating confusion among users looking for Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDING
In this proceeding, the Registrar of the domain name is Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. Complainant has rightly drawn to the attention of the Panel that the registration agreement is in the Chinese language. Accordingly and pursuant to Rule 11 the language of the proceeding is Chinese unless the Panel determines otherwise, having regard to the circumstances of the administrative proceeding.
Complainant has made out a strong case that the language of the proceeding should be English. It has submitted:
“Most notably, as documented by Registrant’s own unmistakable English-language content on the site itself, Registrant utilizes the subject domain in the business of selling the unauthorized bearing products through the underlying site in English and through at least the Alibaba on-line sales portal, which expressly offers goods and transacts business in English as well as offers, sells, and targets consumers in numerous English-speaking nations including Australia, Canada, New Zealand, and the United States thereby demonstrating that the Respondent itself has overtly taken action to avail itself to the benefits of commerce, revenues, and sales in English, thereby legitimately and reasonably invoking the same Registrant to any resulting burdens relating to its actions and conduct, in English.”
1. Complainant is a prominent Japanese corporation and global seller of bearing and industrial products to a wide array of industries and which also maintains a United States presence.
2. Complainant has continuously used the NSK mark since at least May 2, 1927 to market its bearings and related goods and services.
3. Respondent registered the <nsk-skf-ntn.com> domain name on April 7, 2011.
4. Respondent’s <nsk-skf-ntn.com> domain name resolves to a webpage displaying Complainant’s NSK mark, the use of which is unauthorized, alongside the marks of companies in direct competition with Complainant and with which it is not associated. Additionally, the webpage offers for sale counterfeit versions of Complainant’s products and also competing products.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely.
Complainant is a global manufacturer and retailer of industrial bearing products. Complainant uses the NSK mark in conjunction with its business and has done so for many years. Complainant submits that it registered the NSK mark with USPTO (e.g., Reg. No. 857,857, registered Oct. 1, 1968) as well as numerous other marks for NSK internationally. Complainant has submitted extensive evidence to this effect which the Panel accepts. See Compl., at Attached Annex A. The general consensus among UDRP panels is that USPTO mark registrations are sufficient to show rights in a mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant’s USPTO registration is sufficient to show its rights in the NSK mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NSK mark. Complainant submits that Respondent’s <nsk-skf-ntn.com> is confusingly similar to Complainant’s NSK mark because it incorporates the mark in its entirety, adding two additional well-known marks identifying other goods of the same or similar genre, namely NTN and SKF, hyphens, and the “.com” gTLD.
Complainant has rightly submitted that NTN and SKF are not its marks and that they are owned by companies that are not related to but are competitors of Complainant. In other words, Respondent has included those marks in their entirety in the domain name as well as Complainant’s own mark, NSK. Panels have found confusing similarity between a domain name and a trademark where the disputed domain name adds other well-known marks to complainant’s mark, as has occurred in this case. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Applying those principles to the facts of the present case, the Panel finds that an objective bystander would assume that the domain name principally related to Complainant and its goods and services marketed under the NSK mark, as the NSK mark is situated first in line of the three trademarks included in the domain name. The collocation of the three marks in this manner also raises the inference that the domain name was created in this manner deceptively and to attract internet users looking for and familiar with the NSK mark and with the intention of confusing them as to whether it was an official domain name of Complainant that would lead them to its official website. Clearly, the intention in including the NTN and SKF marks in the domain name was to infer, falsely, that there was an association between the owners of those marks themselves and between Complainant and those two other trademark owners and also that the inclusion of the three trademarks in the one domain name was a reason why the internet user should use the domain name and follow it to the resolving website and the goods offered on that site.
Furthermore, Panels have found that hyphens and top-level domains are irrelevant for purposes of the Policy. Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004). In the instant case, the Panel agrees and finds that Respondent’s <nsk-skf-ntn.com> domain name is confusingly similar to Complainant’s NSK mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NSK mark and to use it in its domain name adding the other two marks, namely NTN and SKF;
(b) Respondent registered the domain name on April 7, 2011;
(c) The <nsk-skf-ntn.com> domain name resolves to a webpage displaying Complainant’s NSK mark, the use of which is unauthorized, alongside the marks of companies in direct competition with Complainant and with which it is not associated. Additionally, the webpage offers for sale counterfeit versions of Complainant’s products and also competing products;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant also maintains that Respondent has no rights or legitimate interests in the <nsk-skf-ntn.com> domain name on the ground that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “shi hao” of “shang hai jin ding chuan dong ji xie you xian gong si.” In the absence of a response having been filed by Respondent, “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name.” Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). The Panel concludes that “[g]iven the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). The Panel therefore finds that Respondent is not commonly known by the disputed domain name;
(f) Complainant then avers it has not authorized or licensed Respondent to use the NSK mark in any regard, nor is Respondent affiliated with Complainant. Complainant maintains that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its submission, Complainant illustrates that the <nsk-skf-ntn.com> domain name resolves to a webpage displaying Complainant’s NSK mark alongside the marks of companies in direct competition with Complainant. See Compl., at Attached Annex G. Panels have found that respondent’s use of domain names confusingly similar to the complainant’s mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006). Additionally, the website offers for sale competing products and what are presumably counterfeit versions of Complainant’s products which must therefore, as Complainant rightly points out, carry a considerable concern for public safety. See Compl., at Attached Annex G. UDRP panels have also found no bona fide offering of goods or legitimate noncommercial or fair use existed where respondent used the resolving website to sell products branded with complainant’s mark, and which were either counterfeit products or legitimate products of complainant being resold without authorization. In the present case, the evidence is that Respondent is not an authorized reseller. SeeWolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015). Here, “Respondent maintains a website . . . which appears to sell Complainant’s products and services and contains links to other third-party websites.” The Panel therefore finds that “[s]uch use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).” Microsoft Corp. v. BARUBIN, FA 1174478 (Forum May 6, 2008).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and is using the <nsk-skf-ntn.com> domain name in bad faith. The Panel notes again that Respondent’s <nsk-skf-ntn.com> domain name resolves to a webpage displaying Complainant’s NSK mark, while offering presumably counterfeit products and those in direct competition with Complainant. See Compl., at Attached Annex G. Complainant argues that the disputed domain name attempts to attract internet users to Respondent’s website for commercial gain and the Panel agrees and so finds. Panels have found bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant. Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001). Moreover, Panels have agreed that “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015). The Panel so finds in the present case.
Secondly, Complainant contends that the disputed domain name also disrupts Complainant’s business by creating confusion among users looking for Complainant’s products. “Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).” Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003). Therefore, the Panel agrees and finds that Respondent registered and is using <nsk-skf-ntn.com> in bad faith under the Policy.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the NSK mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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-skf-ntn.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: March 7, 2017
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