National Arbitration Forum
DECISION
W.E.T. Automotive Systems
Aktiengesellschaft v. Jin Huang
Claim Number: FA0909001283502
PARTIES
Complainant is W.E.T. Automotive Systems
Aktiengesellschaft (“Complainant”),
represented by Abby C. Moskovitz, of Dobrusin & Thennisch, PC, Michigan,
USA.
Respondent is Jin Huang (“Respondent”), Washington State, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carbotex.com>, registered with Godaddy.com,
Inc.
PANEL
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.
Hon. Charles A. Kuechenmeister, Retired
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 9, 2009; the
National Arbitration Forum received a hard copy of the Complaint on September 10, 2009.
On September 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <carbotex.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.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 (“UDRP”
or the “Policy”).
On September 18, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 8, 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 postmaster@carbotex.com by e-mail.
A timely Response was received and determined to be complete on October 1, 2009.
An Additional Submission from Complainant was received on October 6,
2009, and was determined to be in compliance with Supplemental Rule 7.
On October 9, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1. Complainant
W.E.T. Automotive Systems Aktiengesellschaft (“Complainant”) is a
corporation organized and existing under the laws of the Federal Republic of
Germany. It is primarily engaged in developing,
manufacturing, and distributing heating systems and accessories for automobile
seats.
2. Complainant
has been using the mark CARBOTEX in
connection with automotive seat heaters since at least 1996. Complainant sells its seat heating technology
to automotive manufacturers including Alfa Romeo, Audi, BMW,
Bentley, Daimler Chrysler, Ferrari,
Fiat, Ford, General Motors, Honda, Hyundai, Kia, Lancia, Maserati, Mitsubishi,
Nissan, Porshe, Rolls Royce, Suzuki, Subaru, Toyota, and Volkswagen, among others. Since 1991, Complainant has sold over
$172,000,000 in CARBOTEX products in
North America.
3. Complainant
registered and owns U.S. Trademark Registration No. 2,218,197 (issued January 19,
1999) for CARBOTEX for use on
“flexible electrical flat heaters” in International Class 011 and
“semi-finished flexible electrical flat heating elements made of carbon fibers
for use in electrical flat heaters” in International Class 017. Complainant also owns German Trademark
Registration No. 39,645,588 for CARBOTEX,
also for use on “flexible electrical flat heaters” and “flexible electrical
flat heating elements (semi-finished products) in particular made of carbon
filters” in Classes 11 and 17.
4. The domain name
at issue herein (the “Domain Name”) is identical to Complainant’s CARBOTEX mark and is therefore confusingly similar to
the Complainant’s CARBOTEX mark.
5. Respondent has
registered and is using the Domain Name for commercial purposes to direct
Internet users to its website selling after-market automobile and motorcycle
seat heating kits. The Respondent’s
website offers install-it-yourself automobile and motorcycle seat heating kits. The automobile seat heating kits are sold as
Heated Seat Kits and the website refers throughout to the domain name
HeatedSeatKits.com. HeatedSeatKits.com
sells the same seat heaters and contains almost the identical website content
as that found on <carbotex.com>. In fact, the Respondent’s <carbotex.com> website repeatedly
refers to the company as HeatedSeatKits.com, not CarboTex.com, on its “Products,” “Frequently Asked Questions,”
“Reseller,” and “Technical Support” pages.
Even the downloadable brochure touts the products and services of
HeatedSeatKits.com not CarboTex.com. Moreover, the “Contact Us” page provides
addresses for <carbotex.com> USA and CarboTex.com CANADA,
which are the same as those listed for HeatedSeatKits.com USA and HeatedSeatKits.com CANADA on the “Contact Us” page on
the HeatedSeatKits.com website.
6. Complainant has
not authorized Respondent to use the CARBOTEX
mark.
8. Respondent is
not making a bona fide offering of goods or services nor has it been commonly
known as CARBOTEX. Use of another’s mark to offer similar goods
or services is not a bona fide use. Indeed, the Respondent’s use of <carbotex.com> intentionally
trades off of the fame of the CARBOTEX
mark and is being used to divert consumers to Respondent’s website in a way
that is misleading. Respondent is not
commonly known as CarboTex, as shown by its repeated references to
HeatedSeatKits.com and the lack of references to CarboTex as a company name. The similarity of the HeatedSeatKits.com and <carbotex.com> websites and the
identical company addresses also show that the Respondent is not commonly known
by <carbotex.com>, but instead
has simply placed the contents of its HeatedSeatKits.com website on <carbotex.com> to trade off of
the Complainant’s goodwill. There is also no business registered with the
CarboTex name in the State of Washington,
where <carbotex.com> USA is
purportedly located.
9. Additionally,
many of the pages from the <carbotex.com>
website, when printed, are identified on the bottom of the page as originating
from Heatedseatkits.com, not <carbotex.com>.
10. The Home Page of
the <carbotex.com> website
also lists High Intensity Discharge (HID) conversion kits and Motorcycle Body Armour for sale, but the link to the HID kits
redirects the user to a different domain, xtechid.com, and the link for
Motorcycle Body Armour takes the
user to a page on <carbotex.com>
that is under construction.
11. All of the
evidence set forth in support of Complainant’s arguments under Section 4(c)
also supports a finding of bad faith.
The Respondent has not been commonly known as CARBOTEX
and is offering the same type of products as those offered by Complainant. The Respondent’s website claims that its
automobile seat heaters are developed and manufactured in Germany – the same country in which
the Complainant is located and in which its CARBOTEX
products are developed and manufactured – further attributing to consumer
confusion. In fact, consumers are very
likely to assume that the Respondent is selling W.E.T.’s products. Also, Respondent’s sale of products developed
and manufactured in the same country as the Complainant shows that Respondent
must have known about the Complainant’s products and use of the CARBOTEX mark.
The evidence shows that Respondent has registered and used the domain
name precisely to divert consumers to its website in an attempt to trade off of
the goodwill of the Complainant’s CARBOTEX
mark. As such, Respondent has clearly
registered and used the domain name in bad faith.
12. On July 24, 2009,
Complainant sent the Respondent a letter demanding that it immediately cease
the use of the Domain Name. This letter
was received by Respondent on July 28, 2009.
Complainant has received no response to this letter and the <carbotex.com> website was still
active as of the date of filing this Complaint.
13. All of the
evidence set forth in support of Complainant’s arguments under Section 4(c)
also supports a finding of bad faith.
The Respondent has not been commonly known as CARBOTEX
and is offering the same type of products as those offered by Complainant. The Respondent’s website claims that its
automobile seat heaters are developed and manufactured in Germany – the same country in which
the Complainant is located and in which its CARBOTEX
products are developed and manufactured – further attributing to consumer
confusion. In fact, consumers are very
likely to assume that the Respondent is selling W.E.T.’s products. Also, Respondent’s sale of products developed
and manufactured in the same country as the Complainant shows that Respondent
must have known about the Complainant’s products and use of the CARBOTEX mark.
The evidence shows that Respondent has registered and used the domain
name precisely to divert consumers to its website in an attempt to trade off of
the goodwill of the Complainant’s CARBOTEX
mark. As such, Respondent has clearly
registered and used the domain name in bad faith.
14. The
Respondent is profiting from W.E.T.’s CARBOTEX
mark by continuing to use the domain name in a manner that is likely to confuse
consumers as to the source or sponsorship of its products. Respondent has no legitimate rights to the
domain name and is using it in bad faith to redirect internet users interested
in W.E.T.’s CARBOTEX products to its
own commercial website in violation of the UDRP.
B. Respondent
1. Respondent has owned
the Domain Name for ten years, having purchased it in 1999.
2. Respondent never heard
of the Complainant or its CARBOTEX
mark until the commencement of these proceedings.
3. Respondent’s website is
primarily a search farm to get search engine rankings for websites selling HID
conversion kits, motorcycle body armor, and motorcycle seat heaters. His main goal was to drive more traffic to
his client’s website, enjoy more opportunities to market, be listed on search
engines, and create distinct advertising strategies.
4. Respondent’s website
does not compete with Complainant, as he sells seat heaters only for
motorcycles, not automobiles.
5. Complainant’s CARBOTEX mark is a combination of three common,
descriptive terms, “car,” “bo” and “tex.” Further, a Google search of CARBOTEX reveals other entities using that name in
connection with numerous items including fishing accessories, design services,
air filters and plastic resins. Complainant
does not show up on the Google search.
The U.S. Patent and Trademark Office shows twelve past and present CARBOTEX trademarks, for companies that make fishing
accessories, conductive fabrics, engine parts, missiles, waste incineration,
computer software, plastic molding, copier toner, pharmaceutical, dialysis,
limestone powder, and rubber.
Complainant cannot claim exclusive rights to the CARBOTEX mark as against Respondent.
6. Respondent has never
offered to sell the Domain Name to anyone.
He never intended to disrupt Complainant’s business or prevent it from
registering its own marks.
B.
Additional
Submission by Complainant
1. Respondent has not
owned the Domain Name for ten years, as he alleges. According to registration data for carbotex.com available for October 23,
2001, that name was registered to a company named Carbo
Tex in Stafford,
Texas. After that date it was registered to another
company not affiliated with Respondent.
2. Regardless of how long
Respondent has actually owned the Domain Name, he did not begin using it to
market seat heaters until at least 2007.
DISCUSSION AND FINDINGS
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (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
the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interest in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
The Panel makes the findings and determinations set forth below with
respect to the matters at issue between the parties.
Identical and/or Confusingly
Similar
Complainant has established rights
in the CARBOTEX mark for the
purposes of Policy ¶ 4(a)(i) through its trademark registration with the United
States Patent and Trademark Office (Reg. No. 2,218,197, issued January 19,
1999). See Paisley Park
Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that
the complainant had established rights in the PAISLEY PARK mark under Policy ¶
4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23,
2006) (finding that where the complainant had submitted evidence of its
registration with the USPTO, “such evidence establishes complainant’s rights in
the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s carbotex.com
domain name is identical to Complainant’s CARBOTEX mark. The Domain Name differs from Complainant’s
mark only in that the generic top-level domain (“gTLD”) “.com” has been added
to the end of the mark. The addition of a gTLD does nothing to
distinguish a domain name from a mark because all domain names must include a
top-level domain. See Diesel v. LMN, FA
804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be
identical to complainant’s mark because “simply eliminat[ing] the space between
terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is]
insufficient to differentiate the disputed domain name from Complainant’s VIN
DIESEL mark under Policy ¶ 4(a)(i)”); see
also Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a
well established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis.”). The Panel
therefore finds that the disputed domain name is not sufficiently distinguished
from, and remains identical to, Complainant’s CARBOTEX
mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the Domain Name
is identical or confusingly similar to the CARBOTEX
Mark, in which the Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
Complainant must
first make a prima facie case that Respondent lacks rights and
legitimate interest in the Domain Name under Policy ¶ 4(a)(ii), and then the
burden shifts to Respondent to show it does have rights or legitimate interest. 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 interest in the disputed domain name under UDRP ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interest in a domain name); see
also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interest in the subject domain names.”).
In its Complaint and its Additional
Submission, Complainant alleges and demonstrates that Respondent is not
commonly known by the name CARBOTEX,
nor has it ever been the owner or licensee of the CARBOTEX
mark. The WHOIS record for the disputed
domain name identifies Respondent as “Jin Huang.” Because Respondent has failed to show any evidence
contrary to Complainant’s contentions and is not known by any variant of the
CARBOTEX mark, the Panel finds that
Respondent is not commonly known by the name CARBOTEX
or any variation thereof. See
Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also M. Shanken Commc’ns
v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also contends and demonstrates that
Respondent is using the Domain Name to misdirect internet users to a website featuring various commercial
links, including links to the very types of products and seat heaters that
Complainant sells under the CARBOTEX
mark. Complainant contends that this use
of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial
or fair use of the disputed domain name under Policy ¶ 4(c)(iii). The Panel concurs, and finds that Respondent
has not been using the Domain Name for a
bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name under
Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that
the respondent’s use of the <expediate.com> domain name to redirect
Internet users to a website featuring links to travel services that competed
with the complainant was not 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 Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the
respondent was not using the <tesco-finance.com> domain name in
connection with a bona fide offering of goods or services or a
legitimate noncommercial or fair use by maintaining a web page with misleading
links to the complainant’s competitors in the financial services industry).
Respondent’s
primary claim that he has some right or legitimate interest in respect of the
Domain Name is that he has owned it for ten years, having purchased it in 1999
without any knowledge of Complainant or its CARBOTEX
mark, and that he uses it in connection with his business to get more hits for
other websites, and be listed on search engines, etc.
In the first
place, the record does not support Respondent’s claim of ownership for ten
years. The WHOIS data for the Domain
Name shows that it was registered to a company in Stafford, Texas named Carbo
Tex as of October 23, 2001, and to a company named New Ventures Services, Corp
in Herndon, Virginia as of November 20, 2006 (Exhibits A and B to Complainant’s Additional Submission).
More
importantly, the only use Respondent is making of the Domain Name is to attract
internet traffic. He neither sells nor
offers any goods or services under the name CARBOTEX—his
goods and services are all marketed under other names, most commonly
“HeatedSeatKits.com.” As is set forth
above, using an infringing domain name to direct internet traffic to other
websites does not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i). See, cites in preceding
paragraph. Respondent cannot
acquire any right or legitimate interest in this Domain Name by using it solely
as bait for internet traffic, as he is doing.
Registration and Use in Bad Faith
Based
upon the allegations and evidence submitted by Complainant, the Panel finds
that Respondent is using the Domain Name to confuse Internet customers as to
the affiliation and sponsorship of his website and divert them from
Complainant’s website to his own website.
Complainant contends that Respondent intended to disrupt Complainant’s
business by this diversion. The Panel
concurs and finds that Respondent did disrupt Complainant’s business in this
manner. This action constitutes
registration and use of the Domain Name in bad faith pursuant to Policy ¶
4(b)(iii). See
Persohn v. Lim, FA 874447 (Nat.
Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to
Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate
a commercial search engine with links to the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206
(Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because
respondent used the disputed domain name to advertise goods and services of
complainant’s competitors, thereby disrupting the complainant’s business).
The Panel further finds that
Respondent gains commercially from this diversion of Internet users, as
Respondent is linking to websites offering products and services that compete
with Complainant’s business and collecting “click-through” fees from those
websites. The Respondent is thus
intentionally using the Domain Name for commercial gain through creating a
likelihood of confusion with Complainant’s mark. Pursuant to Policy ¶ 4(b)(iv), this use is
also evidence of Respondent’s registration and use in bad faith. See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also Asbury
Auto. Group, Inc. v. Tex.
Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that
the respondent’s use of the disputed domain name to advertise car dealerships
that competed with the complainant’s business would likely lead to confusion
among Internet users as to the sponsorship or affiliation of those competing
dealerships, and was therefore evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv)).
Accordingly, the Panel finds and determines
that Respondent has registered and is using the Domain Name in bad faith.
DECISION
The Complainant having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carbotex.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Charles A. Kuechenmeister, Panelist
Dated: October 23, 2009
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