Car-Freshner Corporation and Julius Sämann Ltd. v. li yongbo
Claim Number: FA0901001244741
Complainant is Car-Freshner
Corporation and Julius Sämann Ltd. (“Complainant”),
represented by Robert J. Bernstein, of The Law Office of Robert J. Bernstein, New York, USA. Respondent is li yongbo (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <car-freshners.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 27, 2009. The Complaint was submitted in both Chinese and English.
On February 11, 2009, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <car-freshners.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a Dns has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 18, 2009, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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.
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 requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <car-freshners.com> domain name is confusingly similar to Complainant’s CAR-FRESHNER mark.
2. Respondent does not have any rights or legitimate interests in the <car-freshners.com> domain name.
3. Respondent registered and used the <car-freshners.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Car-Freshner Corporation is the licensee of the CAR-FRESHNER mark, which is owned by Complainant Julius Sämann Ltd., which registered the mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 675,796 issued March 24, 1959). The mark is used in connection with air fresheners and cleaning products.
Respondent registered the <car-freshners.com> domain name on September 12, 2008. The disputed domain name resolves to a website that sells counterfeit 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."
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.”).
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.
The Panel finds that Complainant’s long-standing registration
of the CAR-FRESHNER mark with the USPTO confers upon Complainant rights in the
mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Respondent’s <car-freshners.com> domain name incorporates Complainant’s entire CAR-FRESHNER mark while adding an “s” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations and additions do not adequately distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Complainant must set forth a sufficient prima facie case supporting this assertion, before Respondent receives the burden of proving its rights or legitimate interests in the disputed domain name. The Panel finds Complainant has set forth a sufficient prima facie case in this instance, and now the burden of proving otherwise lies with Respondent. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).
Complainant asserts that Respondent is not commonly known by the disputed domain name, and that the registrant for the disputed domain name is “li yongbo.” Moreover, Complainant argues that Respondent has no license or permission to use Complainant’s mark in any fashion. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant alleges that Respondent is using the disputed domain name
to unlawfully sell counterfeit versions of Complainant’s products, and that
such use competes with Complainant’s operations. The Panel finds that this use fails to
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). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either 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));
see also Hewlett-Packard Co. v. Inversiones HP Milenium
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed domain name to sell counterfeit versions of the products that Complainant sells has disrupted Complainant’s business. The Panel agrees with this argument and finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent has engaged in such usage for commercial benefit in violation of Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent has created a likelihood of confusion as to the source of the disputed domain name for commercial gain and has sought to profit from this confusion. As such, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <car-freshners.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 1, 2009
National Arbitration Forum