ITT Manufacturing Enterprises LLC v. FRANK SUN / ZhangDejun / Shanghai goods pumps co.,ltd
Claim Number: FA1607001682969
Complainant is ITT Manufacturing Enterprises LLC (“Complainant”), represented by Rex A. Donnelly of RatnerPrestia, Delaware. Respondent is FRANK SUN / ZhangDejun / Shanghai goods pumps co.,ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <itt-goodspumps.com> and <itt-goods.com>, registered with eNom, Inc.; and <itt-goods-pumps.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2016; the Forum received payment on July 8, 2016.
On July 10, 2016, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <itt-goods-pumps.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 July 8, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <itt-goodspumps.com> and <itt-goods.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 July 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2016 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@itt-goods-pumps.com, postmaster@itt-goodspumps.com, and postmaster@itt-goods.com. Also on July 12, 2016, 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 August 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant has registered both the ITT trademark (Reg. No. 3,108,719, registered June 27, 2006), and the GOULDS trademark (Reg. No. 2,430,637, registered Feb. 27, 2001) with the United States Patent and Trademark Office (“USPTO”). Both marks are used in connection with the sale of a wide variety of pumps, including oil-draining pumps, cleaning and washing pumps, and water pumps. The <itt-goods-pumps.com> and <itt-goodspumps.com> domain names each contain the entire ITT mark in addition to added hyphens, the descriptive term “pumps,” the term “goods”—either a descriptive term or a term phonetically/visually similar to the GOULDS mark—as well as the generic top-level domain (“gTLD”) “.com.” The <itt-goods.com> domain name contains the entire ITT mark in addition to a hyphen, the descriptive term “goods,” and the gTLD “.com.”
The Complainant further argues that the Respondent has no rights or legitimate interests.
The Complainant further argues that the Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Furthermore, the Respondent is using the domain names to market and/or sell competing goods, and therefore is not making a bona fide offering or a noncommercial or fair use.
The Complainant further argues that the Respondent has engaged in bad faith registration and use. Therefore, the Respondent is displaying bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
In the instant proceedings, the Complainant has alleged that the entities which control the disputed domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant argues that “Frank Sun” is the manager of Shanghai Goods Pumps Co., Ltd. based on contact information listed in the content posted at <itt-goods-pumps.com>, which lists “Frank Sun /孙国强 Service Manager, Key Account” (see Complainant’s attached Exhibit E1); and (ii) the contents of a letter sent to customers of ITT by Shanghai Goods Pumps Co., Ltd., referring to “Frank Sun 孙国强先生（ITT中国生产厂长、ITT中国维修服务中心经理）, Glen McClure 戈兰 麦克鲁尔先生（ITT亚太区全球供应链总监、ITT中国产品总监）,” which translates to “Frank Sun Mr. Sun Guoqiang (ITT China production director, ITT China service center manager), Glen McClure Mr. Goran McClure (ITT Asia Pacific Global Supply Chain Director, ITT China Product Director). See Complainant’s attached Exhibit G.
Considering the above, the evidence filed by the Complainant and the fact that the Respondent has failed to timely respond, the Panel accepts the Complainant's claim and finds it was well demonstrated that the disputed domain names are jointly controlled.
Preliminary Issue: Deficient Response
The Respondent’s response was received on August 9, 2016, and therefore was received after the deadline to file a response. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5. In accordance to the Rules, the Panel, does not accept the Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5).
It must be noted, that even if the Panel would have considered the Respondent's response, the result of the case would be the same. The response which was untimely sent is laconic, in which the Respondent did not make any contentions with regard to Policy ¶ 4(a)(i) and to Policy ¶ 4(a)(ii), but only contended that it has not acted in bad faith because the Respondent is not the administrator of any of the disputed domain names and “has nothing to do” with their existence.
Preliminary Issue: Language of the Proceedings
Rule 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Moreover, the Panel read email correspondence of the Respondent in English and the Respondent did not object to the Complainant's request that English would be the language of the proceedings. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
The Panel finds as follows:
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.”).
Complainant has registered both the ITT trademark (Reg. No. 3,108,719, registered June 27, 2006), and the GOULDS trademark (Reg. No. 2,430,637, registered Feb. 27, 2001) with the USPTO. Both marks are used in connection with the sale of a wide variety of pumps, including oil-draining pumps, cleaning and washing pumps, and water pumps. The Panel may find that Complainant has established sufficient rights under Policy ¶ 4(a)(i). 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).”).
The Complainant argues that the <itt-goods-pumps.com>, <itt-goodspumps.com>, and <itt-goods.com> disputed domain names are confusingly similar to the ITT and GOULDS trademarks. In the interest of clarity, the disputed domain names will be addressed in separate paragraphs below.
The disputed domain name <itt-goods-pumps.com> and <itt-goodspumps.com> each contain the entire ITT mark in addition to added hyphens, the descriptive term “pumps”, the term “goods”—either a descriptive term or a term phonetically/visually similar to the GOULDS mark—as well as the gTLD “.com.” As a general rule, because numerous prior panels have found likewise, this Panel may disregard the addition of hyphens and “.com”. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Additionally, prior Panels have found the addition of descriptive terms to be inconsequential. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Furthermore, the addition of a term sharing a phonetic and/or visual similarity to the trademark(s) at issue has been found to result in a confusing similarity. See Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1596560 (Forum Feb. 2, 2015) (holding, “The terms remain phonetically identical and the alteration is trivial and does nothing to dispel the obvious correspondence between the trademark and the domain name.”).
Therefore, and considering the above the Panel finds that the <itt-goods-pumps.com> and <itt-goodspumps.com> domain names are confusingly similar to the ITT and GOULDS marks.
The disputed domain name <itt-goods.com> contains the entire ITT mark in addition to a hyphen, the descriptive term “goods” (a term that Complainant also argues could be construed as containing a phonetic and/or visual similarity to the GOULDS mark), and the gTLD “.com.” As noted above, the Panel disregarded the hyphen and added “.com.” See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Also noted earlier, descriptive terms and terms containing a phonetic and/or visual similarity have resulted in confusing similarities. See Fil-Tech, Inc. v. Tangidyne Corp, FA 1569093 (Forum Sept. 2, 2014) (holding, “The disputed domain name <phil-tech.com> is confusingly similar to Complainant’s FIL-TECH mark as the name is phonetically identical to the mark.”); see also Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Thus, the Panel may find that the <itt-goods.com> domain name is confusingly similar to the ITT and GOULDS trademarks.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical to the trademarks in which the Complainant has rights.
Under the Policy ¶ 4(a)(ii) it is up to the Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and only 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 Complainant asserts that Respondent is not commonly known by the disputed domain names, nor is Respondent in possession of licensing rights that would allow him to use the ITT and GOULDS trademarks in domain names. The Panel notes that “ZhangDejun” is listed as the registrant of record for the <itt-goods-pumps.com> domain name, and that “FRANK SUN” is listed as the registrant of record for the <itt-goodspumps.com> and <itt-goods.com> domain names. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain names or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Complainant argues that Respondent’s use of the disputed domain names fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the disputed domain names are being used to market and/or sell competing goods or services. The Panel notes the Complainant’s attached Exhibits E1–E3, which purport to be screenshots of the webpages resolving from the disputed domain names. Prior Panels evaluating such behavior have declined to grant rights under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Accordingly, The Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Complainant claims that Respondent has engaged in bad faith registration and use. The Complainant argues that Respondent is displaying bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. To support this argument, the Complainant contends that the domain names are being used to market and/or sell competing goods. Prior Panels dealing with similar situations have found bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Therefore, the Panel agrees with Complainant, and finds bad faith under Policy ¶ 4(b)(iv).
The Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ITT and GOULDS marks. The Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that the Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that the Respondent had actual knowledge of Complainant's mark and rights and therefore determines that the Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Therefore, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itt-goods-pumps.com>, <itt-goodspumps.com>, <itt-goods.com> domain names be TRANSFERRED from Respondent to Complainant.
_____________________________________
Jonathan Agmon, Panelist
Dated: August 25, 2016
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