Deere & Company v. ZENG ZHUHUA / ZHUHUA ZENG
Claim Number: FA1811001817531
Complainant is Deere & Company (“Complainant”), represented by Philip Matthews, Illinois, USA. Respondent is ZENG ZHUHUA / ZHUHUA ZENG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deerefdj.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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 November 21, 2018; the Forum received payment on November 21, 2018. The Complaint was received in both Chinese and English.
On November 22, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <deerefdj.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 November 28, 2018, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 18, 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@deerefdj.com. Also on November 28, 2018, the Chinese language 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 December 20, 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, Deere & Company, is the world’s largest manufacturer of agricultural equipment. Complainant has rights in the JOHN DEERE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 30,580). Complainant also has rights in the DEERE mark based on its Chinese registration (e.g., Reg. No. 7,879,554). Id. Respondent’s <deerefdj.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the DEERE mark in the domain name adds the descriptive term “fdj,” and adds a “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <deerefdj.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to sell counterfeit versions of Complainant’s products.
Respondent registered and uses the <deerefdj.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website where it offers counterfeit goods. Further, Respondent had actual knowledge of Complainant’s rights in the JOHN DEERE and DEERE marks prior to registering 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 <deerefdj.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.”).
Preliminary Issue: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”)
Complainant claims rights in the JOHN DEERE mark based upon its registration of the mark with the USPTO. Registration with the USPTO generally establishes a complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a chart listing its USPTO registrations (e.g., Reg. No. 30,580).
Complainant also claims rights in the DEERE mark based on its registration of the mark in China. Registration of a mark with China’s trademark authority sufficiently establishes rights in the mark under Policy ¶ 4(a)(i). See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).”). Complainant includes its Chinese registrations in its chart of registrations (e.g., Reg. No. 7,879,554). The Panel finds that Complainant has rights in the DEERE mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <deerefdj.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the DEERE mark in the domain name and adds a descriptive term and a gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Here, Respondent incorporates the DEERE mark in its entirety in the domain, adds the descriptive term “fdj” (Chinese Pinyin for the word “engine” (“Fa Dong Ji”)), and adds a “.com” gTLD. The Panel finds that Respondent’s <deerefdj.com> domain name is confusingly similar to Complainant’s DEERE mark under 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), 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 argues that Respondent lacks rights and legitimate interests in the <deerefdj.com> domain name because Respondent is not authorized or permitted to use Complainant’s JOHN DEERE or DEERE marks and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from a complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS of record identifies Respondent as “ZENG ZHUHUA / ZHUHUA ZENG,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. The Panel finds that Respondent lacks rights and legitimate interests in the <deerefdj.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <deerefdj.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to sell counterfeit versions of Complainant’s products. Use of a disputed domain name to sell counterfeit goods may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding 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 MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant claims that Respondent uses the disputed domain to sell Complainant’s products. The Panel finds that Respondent fails to use the <deerefdj.com> domain in connection with 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).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <deerefdj.com> domain name in bad faith because Respondent uses the domain to attract users for commercial gain through the sale of counterfeit products. Such use may evince bad faith under Policy ¶ 4(b)(iv). See Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (determining that the respondent’s offering of counterfeit versions of the complainant’s software creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). The Panel finds this is evidence that Respondent uses the <deerefdj.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues Respondent had actual knowledge of Complainant’s rights in the JOHN DEERE and DEERE marks prior to registering the <deerefdj.com> domain name. Actual knowledge of complainant’s rights in a mark may support a finding of bad faith under Policy ¶ 4(a)(iii), and can be established by evidence of the fame of the mark and the respondent’s use of it. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant provides evidence of use of its mark in commerce and media recognition. Complainant also cites Respondent’s use of the disputed domain to sell counterfeit versions of its products. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the DEERE mark and registered and uses the domain name in bad faith under 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 <deerefdj.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 28, 2018
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