national arbitration forum




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., California, USA.  Respondent is Lawrance Tsang (“Respondent”), China.



The domain name at issue is <>, 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 July 31, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 30, 2009.


On July 31, 2009, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Backslap Domains, Inc and that Respondent is the current registrant of the name.  Backslap Domains, Inc has verified that Respondent is bound by the Backslap Domains, 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 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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On September 3, 2009 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jude Ralph Yachnin 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 <> domain name is identical to Complainant’s CHINA DIESEL mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> 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 China.  Complainant owns and operates the <> domain name, and uses it to sell diesel generators and parts.  Complainant has registered its CHINA DIESEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,408,173 issued November 28, 2000, filed July 12, 1999). 


Respondent, Lawrance Tsang, registered the disputed <> domain name on March 7, 1996.  There is no indication as to how the disputed domain name is being used, or whether or not it resolves to an active website.



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.


Identical and/or Confusingly Similar


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 <> domain name on March 7, 1996, which predates Complainant’s application filing date with the USPTO.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration. Although it might be possible to establish rights prior to that date based on use, Complainant has submitted insufficient evidence to prove common law rights before the filing date of its federal registration.”).  Therefore, the Panel finds that Complainant’s USPTO registration does not provide sufficient rights in the CHINA DIESEL mark predating Respondent’s registration of the disputed domain name under Policy ¶ 4(a)(i).  See Trujillo v. lSoft Corp. FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown their rights pre date Registrant’s domain name, Complainant’s have not satisfied paragraph 4(a)(i) of the Policy”), see also Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum Jan. 21, 2003) (finding that the complainant failed to satisfy Policy ¶ 4(a)(i) because the respondent’s domain name registration predated the complainant’s rights in its mark by nearly two years).


The Panel finds that Complainant lacks rights in the CHINA DIESEL mark due to Respondent’s registration of the <> before Complainant’s trademark registration filing with the USPTO.  However, trademark registration with the USPTO is unnecessary where Complainant can prove common law rights by a showing that the CHINA DIESEL mark has acquired secondary meaning through extensive and continuous use.  See Hiatt v. personal fan & official site builders : we build great sites, FA 881460 (Nat. Arb. Forum Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under Policy ¶ 4(a)(i) in instances where a mark has gained secondary meaning through extensive commercial use and common law rights have been established ….”).  In attempting to prove common law rights, Complainant asserts that it has used the CHINA DIESEL mark continuously in commerce since 1977 in connection with its business of importing and distributing Chinese machinery products.  The Panel finds that Complainant’s assertion of common law rights is merely a self-serving allegation that lacks substantiation due to Complainant’s failure to provide supporting evidence of any kind.  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).  As a result, the Panel finds that Complainant has failed to meet the threshold for proving common law rights in the CHINA DIESEL mark through proof that the mark has acquired secondary meaning pursuant to Policy ¶ 4(a)(i).  See Build-A-Bear Workshop, Inc. v. Pallone, FA 874279 (Nat. Arb. Forum Mar. 1, 2007) (finding that the complainant did not establish common law rights in the BEAR BUILDER or BEAR BUILDERS marks because the evidence it submitted was insufficient to show the mark had acquired any secondary meaning); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (finding that the complainant did not submit sufficient evidence showing that its OCCIDENTAL mark had acquired the necessary secondary meaning for it to establish common law rights pursuant to Policy ¶ 4(a)(i)).  Therefore, the Panel finds that Complainant has neither trademark rights, nor common law rights in the CHINA DIESEL mark pursuant to Policy ¶ 4(a)(i).


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.


Rights or Legitimate Interests


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 USA, infra; see also Creative Curb, infra.


Registration and Use in Bad Faith


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 C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name).  In order to satisfy the bad faith registration and use prima facie evidentiary requirement under Policy ¶ 4(a)(iii), a complainant may level assertions and submit evidence under the factors enumerated within Policy ¶ 4(b) or the totality of the circumstances under Policy ¶ 4(a)(iii).  See, e.g., Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).  Consequently, mere assertions of bad faith registration and use are not sufficient to surpass the hurdle under the Policy.  See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). 


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 Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).


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 <> domain name REMAIN with Respondent.




Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, (Ret.)


Dated:  September 21, 2009



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