Hardy Diesels & Equipment Inc. v. Lawrance Tsang
Claim Number: FA0907001276706
Complainant is Hardy Diesels & Equipment Inc. (“Complainant”), represented by Loren
Day, of Hardy Diesels & Equipment Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chinadiesel.com>, registered with Backslap Domains, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On August 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <chinadiesel.com> domain name is identical to Complainant’s CHINA DIESEL mark.
2. Respondent does not have any rights or legitimate interests in the <chinadiesel.com> domain name.
3. Respondent registered and used the <chinadiesel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Hardy Diesels & Equipment Inc., has used
its CHINA DIESEL mark continuously since 1977 in connection with the sale and
distribution of various diesel machinery imported from
Respondent, Lawrance Tsang,
registered the disputed <chinadiesel.com> domain name on
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 submitted evidence of its registration of
the CHINA DIESEL mark with the USPTO (Reg. No. 2,408,173 issued November 28,
2000, filed July 12, 1999). However,
Respondent registered the <chinadiesel.com> domain name on
The Panel finds that Complainant lacks rights in the
The Panel suggests that the following may be helpful in proving rights where the mark is not registered: prominent usage of the designations on the respective websights; evidence of these of the designations in their hard copy publications so as to indicate that the goods or services referred to in these publications are provided under the designations on specific goods provided by the Complainant; evidence of the volume and extent of such uses: WIPO/D002-0981
The Panel finds that Policy ¶ 4(a) (i) has not been satisfied.
Because of the Panel’s finding in Policy ¶ 4(a)(i) and
4(a)(iii), the Panel chooses to forego an analysis under Policy ¶
4(a)(ii). See Graman
Where a respondent fails
to yield a response in a given case, the complainant is nevertheless obligated
to establish a prima facie case. See VeriSign Inc. v. VeneSign
In this case, Complainant has failed to specifically allege how the disputed domain name is used or has been used in the past. Given that the disputed domain name has been registered since 1996, there must be some evidence as to whether or not the disputed domain name has been used actively. Complainant merely states that Respondent’s “main intent for this domain is to gain commercially as the words … [of the domain name] are widely searched and are very popular.... It can be assumed that [Respondent’s] sole purpose … was for cybersquatting.” Respondent goes on to note that “several of [Complainant’s] customers have contacted [Complainant] and are confused because they think [Complainant is] out of business.” Lacking in these brief assertions is any contention of what content exists on the resolving website, or even whether the disputed domain name resolves to an active website. The Panel therefore has no evidence before it to find that Respondent’s intent was commercial, much less that it engaged in any specific use. The Panel therefore points to previous precedent in PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29, 2002), wherein that panel found that because the complainant failed to provide any factual allegations as to the nature of use of the disputed domain name, the complainant failed to prove that the respondent’s domain names were being used in bad faith). Similarly, in Loris Azzaro BV, SARL v. Asterix, D2000-0608 (WIPO Sept. 4, 2000), the panel noted that “[m]ere belief and indignation by Complainant that Respondents have registered and are using the Domain Name in bad faith are insufficient to warrant the making of such a finding in the absence of conclusive evidence.” Therefore, the Panel finds that Complainant’s failure to satisfy its prima facie evidentiary burdens under Policy ¶ 4(a)(iii) necessarily prevents any sort of finding by the Panel that Respondent engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has failed to satisfy
Policy ¶ 4(a)(iii), as noted above.
Because the Panel has found that Complainant has not met its
requirements under one of the elements of the Policy, the Panel is permitted to
omit an analysis under the remaining element of the Policy in Policy ¶
4(a)(ii). The Panel so chooses. See
Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA
1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all
three elements of the Policy once shown the complainant could not satisfy one
element); see also Creative Curb v. Edgetec Int’l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chinadiesel.com> domain name REMAIN with Respondent.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, (Ret.)
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