Harman International Industries, Inc. v. chen jian
Claim Number: FA2112001977584
Complainant is Harman International Industries, Inc. (“Complainant”), represented by Corsearch, Inc., Texas, USA. Respondent is chen jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jblnew.com> and <jbloe.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2021; the Forum received payment on December 17, 2021.
On December 21, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <jblnew.com> and <jbloe.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 December 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022 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@jblnew.com, postmaster@jbloe.com. Also on December 27, 2021, 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 January 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant argues that there are multiple Respondents but that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
However, the evidence in the file shows that both disputed domain names were registered by the same registrant. Thus there is only one Respondent in the instant proceedings.
A. Complainant
Complainant states that it manufactures and markets a wide range of high-end, high-fidelity audio and video system components for consumer and professional markets worldwide. Complainant produces, designs and engineers connected products for automakers, consumers and enterprises worldwide including connected car systems, audio and visual products, enterprise automation solutions and connected services. Complainant’s portfolio of audio brands includes AKG, HARMAN KARDON, INFINITY, JBL, LEXICON, MARK LEVINSON and REVEL. Complainant is respected by fans, hi-fi enthusiasts and musicians and their products are used at entertainment venues worldwide. More than 50 million automobiles today are equipped with Complainant’s audio and connected car systems. JBL-branded products have been sold since the 1940s and celebrated its 70th anniversary in 2016. JBL products are available worldwide in over 40 countries. Complainant has a workforce of approximately 25,000 people across the Americas, Europe, and Asia. It reported net sales of $6.91 billion in 2016. Complainant has rights in the JBL mark through its registration of the mark in the United States in 1964. The mark is registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are confusingly similar to its JBL mark as they incorporate the mark in its entirety and merely add one of the generic terms “new” or “oe” (which stands for “original equipment”) along with the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor did Complainant authorize Respondent to use the JBL mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names. Instead, Respondent is selling Complainant’s products without authorization in hopes to confuse internet users that Respondent is affiliated with Complainant: the resolving websites display Complainant’s mark and logo and pictures of Complainant’s products.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith as Respondent attempts to confuse internet users into thinking Respondent is affiliated with Complainant by offering its products for sale without authorization. Respondent had actual knowledge of Complainant’s rights in the JBL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademark rights for the mark JBL and uses it to market audio equipment. The mark was registered in 1964.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names were registered in 2021.
The resolving websites display Complainant’s mark and logo and purport to offer for sale unauthorized versions of Complainant’s products.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names incorporate Complainant’s JBL mark in its entirety and merely add one of the generic terms “new” or “oe” (which stands for “original equipment”) along with the “.com” generic top-level domain (“gTLD”). Registration of a domain name that contains a mark in its entirety and adds a generic term and a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Therefore the Panel finds that that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain names lists the registrant as “chen jian”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The resolving websites display Complainant’s mark and logo and purport to offer for sale unauthorized versions of Complainant’s products. Use of a disputed domain name to resolve to a webpage that offers a complainant’s products for sale is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain names to offer for sale unauthorized versions of Complainant’s products. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and logo, and images of Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <jblnew.com> and <jbloe.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 24, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page