Metso Corporation v. gueijuan xu
Claim Number: FA1808001802790
Complainant is Metso Corporation (“Complainant”), represented by Johanna M. Wilbert of Quarles & Brady LLP, Wisconsin, USA. Respondent is gueijuan xu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mymetso.com>, registered with GoDaddy.com, LLC.
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 August 22, 2018; the Forum received payment on August 22, 2018.
On August 23, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mymetso.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2018 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@mymetso.com. Also on August 23, 2018, 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 September 17, 2018, 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, Metso Corporation, is a world-leading industrial company offering equipment and services for the sustainable processing and flow of natural resources in the mining, aggregates, recycling, and process industries. Complainant has rights in the METSO mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,510,330 registered Oct. 7, 2008). Respondent’s <mymetso.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the disputed domain name plus the descriptive term “my” before Complainant’s mark.
Respondent lacks rights and legitimate interests in the <mymetso.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent attempts to redirect internet users to a website that displays adult-oriented material.
Respondent registered and uses the <mymetso.com> domain name in bad faith. Respondent has been involved in multiple UDRP cases which resulted in the transfer of disputed domain names. Additionally, Respondent displays adult-oriented material at the webpage associated with the disputed domain name. Further, Respondent has engaged in the practice of typosquatting by taking advantage of a common typographical error in order to redirect users to Respondent’s website. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
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 <mymetso.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.”)
Identical and/or Confusingly Similar
Complainant asserts rights in the METSO mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish a Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its registration of the mark with the USPTO (e.g., Reg. No. 3,510,330 registered Oct. 7, 2008). The Panel finds that Complainant has rights in the METSO mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mymetso.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the disputed domain name plus the descriptive term “my” before Complainant’s mark. The addition of a descriptive term to a mark is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Here, Complainant includes the entire METSO mark plus the descriptive word “my” before the mark in the disputed domain name. The Panel finds, per Policy ¶ 4(a)(i), that Respondent’s disputed domain name is confusingly similar to Complainant’s mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent lacks rights and legitimate interests in the <mymetso.com>domain name. Specifically, Complainant contends Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify the registrant of a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization from a complainant to use its marks may be evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant provides a copy of the WHOIS information which identifies the registrant of the disputed domain name as “gueijuan xu,” and no information of the record indicates Respondent was authorized to use Complainant’s mark. Therefore, under a Policy ¶ 4(c)(ii) analysis, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent fails to use the <mymetso.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Complainant claims Respondent displays adult-oriented material at the webpage associated with the disputed domain name. Use of a domain name to display adult-oriented material is not considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶ 4(a)(ii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). Complainant provides screenshots of the webpage associated with the disputed domain name which does appear to contain pornographic material. The Panel finds that Respondent uses the disputed domain name to promote adult oriented material, and lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant argues Respondent registered and uses the <mymetso.com> domain name in bad faith. Specifically, Complainant contends Respondent has engaged in a pattern of bad faith registration by being involved in multiple previous UDRP cases involving the transfer of domain names. A respondent who has engaged in a pattern of bad faith registration may be found to have acted in bad faith in the current proceeding under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides multiple cases in which Respondent was involved which resulted in the transfer of disputed domain names. The Panel finds that Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Complainant contends that Respondent uses the disputed domain name to host a webpage that contains adult-oriented material. Use of a domain name to host a webpage containing pornographic content is evidence of bad faith under Policy ¶ 4(a)(iii). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Complainant provides screenshots of the webpage associated with the disputed domain name which contains pornographic material. The Panel finds that Respondent uses the disputed domain name to promote adult oriented material in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent has engaged in the practice of typosquatting and deliberately takes advantage of a common typographical error to redirect users to Respondent’s webpage. A respondent who engages in the practice pf typosquatting may be found in bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Complainant alleges Respondent deliberately omits the period from the disputed domain name which is present in Complainant’s legitimate domain name, <my.metso.com>. The Panel finds this is not misspelling of Complainant’s mark and is not typosquatting under Policy ¶ 4(a)(iii).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. Specifically, Respondent registered the disputed domain name over twenty years after Complainant registered its <metso.com> domain name. A respondent who had actual knowledge of complainant’s rights in a mark prior to registration may be found in bad faith under Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Complainant asserts it has been using the METSO mark to identify its products and services for two decades, therefore Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds from Complainant’s uncontested allegations and evidence that Respondent had knowledge of Complaint’s mark and registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mymetso.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 26, 2018
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