Norgren, Inc. v. Shen Yang Shi Shen He Qu Qi Xing Wang Luo Ji Shu Gong Zuo Shi
Claim Number: FA1310001525612
Complainant is Norgren, Inc. (“Complainant”), represented by Susanna Semaszczuk of The Ollila Law Group, Colorado, USA. Respondent is Shen Yang Shi Shen He Qu Qi Xing Wang Luo Ji Shu Gong Zuo Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ckd-norgren.net>, registered with Foshan YiDong Network 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2013; the National Arbitration Forum received payment on November 18, 2013. The Complaint was received in both Chinese and English.
On November 19, 2013, Foshan YiDong Network Co.LTD confirmed by e-mail to the National Arbitration Forum that the <ckd-norgren.net> domain name is registered with Foshan YiDong Network Co.LTD and that Respondent is the current registrant of the name. Foshan YiDong Network Co.LTD has verified that Respondent is bound by the Foshan YiDong Network 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 19, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 9, 2013 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@ckd-norgren.net. Also on November 19, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
On December 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following contentions:
1. Complainant has rights in the NORGREN mark under Policy ¶ 4(a)(i).
a. Complainant has established rights in the NORGREN mark through long term, continuous and exclusive use of the mark in commerce in the United States and worldwide. The mark is used to identify fluid control products.
b. Complainant owns trademark registrations for the NORGREN mark with the United States Patent and Trademark Office (“USPTO”) as well as with various countries around the world including China’s State Administration for Industry and Commerce (“SAIC”).
i. USPTO (e.g., Reg. No. 950,639 registered January 16, 1973)
ii. SAIC (through Reg. No. 285,785)
c. Respondent’s <ckd-norgren.net> domain name is confusingly similar to Complainant’s NORGREN mark.
i. Respondent includes Complainant’s mark in its entirety with the addition of the letters “ckd” and a dash.
ii. The addition of the generic top-level domain “.net.” does not negate the confusingly similarity of Respondent’s <ckd-norgren.net> domain name to Complainant’s NORGREN mark.
2. Respondent has no rights or legitimate interests in the <ckd-norgren.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent has no trademark or intellectual property rights in the disputed domain name.
ii. Complainant has never licensed or authorized Respondent to use Complainant’s NORGREN mark.
iii. There is no relationship between Complainant and Respondent.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <ckd-norgren.net> domain name.
i. Respondent has never made any use of, or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services.
ii. Respondent uses the disputed domain name to advertise its own company while displaying Complainant’s NORGREN mark.
iii. Respondent uses the disputed domain name to offer Complainant’s and competitor’s products
iv. Respondent uses the disputed domain name to take advantage of Complainant’s reputation by offering products that compete with Complainant under Complainant’s NORGREN trademark.
3. Respondent has registered and is using the <ckd-norgren.net> disputed domain name in bad faith.
a. Respondent registered the <ckd-norgren.net> domain name to disrupt Complainant’s business by offering products that compete with Complainant.
b. Respondent uses the disputed domain name to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.
c. Respondent was aware of Complainant’s NORGREN mark at the time Respondent registered the <ckd-norgren.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the Panel notes that Respondent’s <ckd-norgren.net> domain name was registered March 6, 2013.
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(e), 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 (Nat. Arb. 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 contends that it has rights in the NORGREN mark under Policy ¶ 4(a)(i) through its registrations for the NORGREN mark. Complainant states that it has established rights in the NORGREN mark not only through its registrations but through long term, continuous and exclusive use of the mark in commerce in the United States and worldwide. Complainant provides the Panel with evidence that it owns trademark registrations for the NORGREN mark with the USPTO. For example, the Panel notes that Complainant holds USPTO Registration Number 950,639 registered January 16, 1973 . Providing evidence of a registration for a given trademark with a recognized authority is sufficient to establish rights in a given mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel concludes that Complainant has rights in the NORGREN mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <ckd-norgren.net> domain name is confusingly similar to Complainant’s NORGREN mark under Policy ¶ 4(a)(i). Complainant explains that Respondent includes Complainant’s mark in its entirety with the addition of the letters “ckd” and a dash. Adding letters and/or symbols to a complainant’s registered mark does not overcome a finding of confusingly similar under Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks.). This Panel similarly finds that Respondent’s <ckd-norgren.net> domain name is confusingly similar to Complainant’s NORGREN mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <ckd-norgren.net> domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent is not commonly known by the disputed domain name because Respondent has no trademark or intellectual property rights in the disputed domain name. Complainant further asserts that Complainant has never licensed or authorized Respondent to use Complainant’s NORGREN mark. Complainant further points out that the WHOIS information for the disputed domain name identifies the registrant as " Shen Yang Shi Shen He Qu Qi Xing Wang Luo Ji Shu Gong Zuo Shi.” A respondent has no rights or legitimate interests in a disputed domain name where there is no indication on the record or otherwise indicating that a respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel concludes that Respondent is not commonly known by the <ckd-norgren.net> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <ckd-norgren.net> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent uses the disputed domain name to advertise its own company while displaying Complainant’s NORGREN mark. Complainant contends that Respondent uses the disputed domain name to offer Complainant’s products as well as products that compete with Complainant’s business. Complainant further argues that Respondent uses the disputed domain name to take advantage of Complainant’s reputation by offering products that compete with Complainant under Complainant’s NORGREN trademark. The Panel notes that Respondent’s website features Complainant’s NORGREN mark as a heading. Using a confusingly similar domain name to resolve to a website that offers complainant’s products as well as competing products is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). The Panel concludes that Respondent has no rights or legitimate interests in the <ckd-norgren.net> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <ckd-norgren.net> domain name Under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has registered and is using the <ckd-norgren.net> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent registered the <ckd-norgren.net> domain name to disrupt Complainant’s business by offering products that compete with Complainant. Complainant argues that Respondent’s confusingly similar domain name will mislead and divert Internet users to Respondent’s website, where competing products are offered. Previous panels have found bad faith use and registration through commercial disruption where a respondent uses a confusingly similar domain name to resolve to a website that competes with a complainant. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel therefore concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further claims that Respondent registered and is using the <ckd-norgren.net> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant contends that Respondent uses the disputed domain name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. Complainant argues that Respondent benefits financially by alluring Internet users into visiting Respondent’s website. Previous panels have traditionally found bad faith under Policy ¶ 4(b)(iv) when a Respondent uses a confusingly similar domain name to attract Internet users to a respondent’s resolving website that is being used in competition with the complainant and respondent is commercially profiting. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). The Panel concludes that Respondent’s use of the disputed domain name to attract Internet users to its website and confuse them as to Complainant’s affiliation with Respondent’s website indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s promotion of the same types of products offered by Complainant under the NORGREN mark, as well as Respondent’s explicit use of the NORGREN mark, further indicate that Respondent had actual knowledge of Complainant and its rights in the NORGREN mark when registering this domain name. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <ckd-norgren.net> domain name in bad faith according to Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ckd-norgren.net> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 26, 2013
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