Sandvik Intellectual Property AB v. chen yuanyuan c/o yuanyuan chen
Claim Number: FA0902001248631
Complainant is Sandvik
Intellectual Property AB (“Complainant”), represented by Jennifer L. Dean, of Drinker Biddle &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <santvikcrusher.com>, registered with Bizcn.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2009.
On February 22, 2009, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <santvikcrusher.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 March 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 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 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <santvikcrusher.com> domain name is confusingly similar to Complainant’s SANDVIK mark.
2. Respondent does not have any rights or legitimate interests in the <santvikcrusher.com> domain name.
3. Respondent registered and used the <santvikcrusher.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sandvik Intellectual Property AB, utilizes its SANDVIK mark in connection with equipment and tools for rock-excavation, mining, drilling, and power-operated crushing tools for mining and construction services. Complainant has registered its SANDVIK mark numerous times with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,097,910 issued August 1, 1978) and has used the mark since 1868. Complainant has also registered its mark with other governmental trademark authorities worldwide.
Respondent registered the <santvikcrusher.com> domain name on August 21, 2008. The disputed domain name resolves to a website that purports to offer crushers and mills for sale.
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.
Complainant has established sufficient rights in the SANDVIK mark through its numerous long-standing registrations of the mark with the USPTO under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The disputed <santvikcrusher.com> domain name
contains Complainant’s SANDVIK mark, replaces the “d” in the mark with a “t,”
adds the descriptive term “crusher,” and adds the generic top-level domain
“.com.” The Panel notes that the
addition of a gTLD is immaterial.
Moreover, the replacement of a letter with its phonetical equivalent
does not render the disputed domain name sufficiently distinct from the
mark. The Panel also notes that the
insertion of a descriptive term heightens the resulting confusing similarity,
as here the term “crusher” describes one of Complainant’s main products. The Panel finds that the disputed domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because the Panel finds that Complainant has successfully asserted a sufficient prima facie case supporting its allegations that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), Respondent receives the task of demonstrating its rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent has failed to submit a response in this proceeding, leaving the Panel bereft of any concrete information that would suggest that Respondent is or was commonly known by the <santvikcrusher.com> domain name. While the resolving website purports to describe a “Santvik” mining company, there is no corroborating evidence to support this implication. Whatever benefit may be drawn from the resolving web page on Respondent’s behalf is nonetheless belied by the WHOIS information, which lists Respondent as “chen yuanyuan c/o yuanyuan chen.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The disputed domain name purports to offer competitive products for sale. The Panel finds that the use of Complainant’s mark in the confusingly similar disputed domain name fails as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
That Respondent has utilized the confusingly similar disputed domain name to purportedly offer competitive goods demonstrates Respondent’s intent to disrupt Complainant’s operations for Respondent’s commercial benefit, which in turn evidences Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). 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)); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Moreover, Respondent has created a likelihood of confusion as to Complainant’s source and endorsement of the disputed domain name and resolving website through the use of Complainant’s mark in the confusingly similar disputed domain name. This likelihood of confusion was intentionally fostered by Respondent for presumed commercial gain. Therefore, Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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 <santvikcrusher.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 10, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum