Emerson Electric Co. v. caijianlin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si
Claim Number: FA1901001825027
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is caijianlin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <branson-hq.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2019; the Forum received payment on January 15, 2019.
On January 17, 2019, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <branson-hq.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 January 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2019 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@branson-hq.com. Also on January 22, 2019, 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 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Emerson Electric Co., is a diversified, global manufacturing and technology company.
Complainant has rights in the BRANSON mark based on its registration of the mark with the State Administration for Industry & Commerce of the People’s Republic of China (“SAIC”) and the United States Patent and Trademark Office (“USPTO”).
Respondent’s <branson-hq.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the BRANSON mark in the domain name, adds a hyphen, adds the generic term “hq,” and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <branson-hq.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 pass off as Complainant.
Respondent registered and uses the <branson-hq.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration based on past adverse UDRP history and Respondent’s ownership of another infringing domain name. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website where it offers Complainant’s goods for sale without authorization. Further, Respondent had actual knowledge of Complainant’s rights in the BRANSON mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the BRANSON mark.
Complainant’s rights in BRANSON existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <branson-hq.com> domain name to pass itself off as Complainant.
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.”).
Pursuant to UDRP Rule 11(a), Complainant requests that the language of this administrative proceeding continue in the English language. In that regard the Panel finds that persuasive evidence has been proffered by Complainant to show that Respondent is reasonably proficient in the English language and that Complainant would be unjustly burdened if the proceedings were required to go forth in Chinese. To wit, Complainant shows that the website addressed by Respondent’s domain name features various phrases in English; that the term Branson does not carry any meaning in the Chinese language; and that proceeding in Chinese would burden Complainant by increasing Complainant’s time and expenditures related to the instant dispute. Therefore, after considering the circumstances of the present case and Complainant’s undenied aversions, the Panel concludes that the instant proceeding should be 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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of SAIC and USPTO trademark registrations for its BRANSON mark independently evidence Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <branson-hq.com> domain names incorporates Complainant’s BRANSON mark followed by a hyphen and the descriptive term “hq,” all followed by the top level domain name “.com.” The differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <branson-hq.com> domain name is confusingly similar to Complainant’s BRANSON trademark under Policy ¶4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also, Google Inc. v. Chen Weilong, FA1803596 (Forum Sept. 24, 2018) (finding confusing similarity where the <googlechrome2018.net> and <newchromeonline.com> domain names incorporate CHROME in its entirety).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “caijianlin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <branson-hq.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <branson-hq.com>domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to address a webpage featuring Complainant’s mark and mimicking Complainant’s branding and website. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the <branson-hq.com> to address a website that is designed to appear as if sponsored by Complainant. There, Respondent offers Complainant’s BRANSON products for sale without authorization to do so. Respondent’s use of the at-issue domain name to pass off as Complainant demonstrates Respondent’s bad faith registration and use of the <branson-hq.com> domain name under Policy ¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Second, Respondent appears to have registered multiple domain names that either have been the subject of separate UDRP proceedings or otherwise infringed one of Complainant’s trademarks. In addition to the instant proceeding Respondent suffered an adverse UDRP decision in Emerson Electric Co. v. Cai Jian Lin I Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA1807001798802 (Forum Aug. 31, 2018)) concerning the <bransdn.com> domain name. Further, WHOIS information shows that Respondent registered the domain name <binengxin.cn>, which is confusingly similar to the phonetic pronunciation of another of Complainant’s trademarks. Respondent’s pattern of cybersquatting exhibited by trademark similar domain name registrations and an adverse UDRP decision, evidences Respondent’s bad faith in the instant case per Policy ¶ 4(a)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Lastly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the BRANSON mark when it registered the <branson-hq.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, the trademark’s use on Respondent’s <branson-hq.com> website, and the fact that Complainant’s BRANSON trademark was the subject of another UDRP proceeding involving Respondent. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <branson-hq.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 18, 2019
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