Hardy Diesels & Equipment Inc. v. Lawrance Tsang
Claim Number: FA0911001292446
Complainant is Hardy Diesels & Equipment Inc. (“Complainant”), represented by Loren Day, California, USA. Respondent is Lawrance Tsang (“Respondent”), Nevada, USA.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2009.
On November 2, 2009, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <chinadiesel.com> 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 November 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 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@chinadiesel.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret) 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 <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., registered the <chinadiesel.com> domain name on March 7, 1996. Due to a clerical error, Complainant lost the disputed domain name in March 2006. Complainant owns a registration of the CHINA DIESEL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,408,173 issued November 28, 2000).
Respondent, Lawrance Tsang, acquired the <chinadiesel.com> domain name in April 2006 after Complainant inadvertently allowed its registration of the domain name to lapse. Respondent uses the disputed domain name to display sponsored links to third-party websites, including providers of diesel generators in direct competition with Complainant.
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 ownership of the
registration of the CHINA DIESEL mark (Reg. No. 2,408,173 issued November 28,
2000) with the USPTO. The Panel finds
that this registration is sufficient to establish Complainant’s rights in the
mark pursuant to Policy ¶ 4(a)(i). See Miller
Brewing Co. v. Miller Family, FA 104177 (Nat.
Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights
to the MILLER TIME mark through its federal trademark registrations); see also 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).
Complainant contends that the <chinadiesel.com> domain name is identical to its CHINA DIESEL mark since the only changes are the omission of the space and the addition of the generic top-level domain (“gTLD”) “.com,” which are both irrelevant to an analysis under Policy ¶ 4(a)(i). The Panel agrees and finds that the disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the <chinadiesel.com> domain name. Once Complainant has made a prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). 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”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent is using the disputed domain name, which is identical to Complainant’s mark, to resolve to a website displaying links to third-party websites. Some of these links direct Internet users to Complainant’s direct competitors, who also offer diesel generators. The Panel finds that this use is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds 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 under Policy ¶ 4(c)(iii).”).
Complainant asserts that it has not granted any license
allowing Respondent to use its CHINA DIESEL mark. Additionally, there is no evidence in the
record suggesting that Respondent is commonly known by the disputed domain
name. The WHOIS information associated
with the disputed domain name lists Respondent as “Lawrance Tsang.” The Panel finds
that Respondent is not commonly known by the <chinadiesel.com>
domain name pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name).
Additionally,
Complainant was the original registrant of the <chinadiesel.com> domain name on
March 7, 1996 and Respondent registered the disputed domain name after
Complainant mistakenly allowed the registration to lapse. The Panel finds that this is further evidence
that Respondent lacks rights and legitimate interests in the <chinadiesel.com> domain name under
Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v.
“Infa dot Net” Web Servs., FA
95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior
registration of the same domain name is a factor in considering the
respondent’s rights or legitimate interests in the domain name); see also Zappos.com, Inc. v.
Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact
that Complainant had previously held the <wwwzappos.com> domain name
registration and has mistakenly allowed it to expire is further evidence that
Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
contends that Respondent is offering the <chinadiesel.com> domain name for sale for over
$15,000. The Panel finds that this offer
to sell the disputed domain name for an amount in excess of Respondent’s
out-of-pocket costs is evidence of bad faith registration and use under Policy
¶ 4(b)(i). See
Campmor, Inc. v. GearPro.com, FA 197972
(Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name
and offered to sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”); see also Matmut v. Tweed,
D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where
the respondent stated in communication with the complainant that it would be
ready to sell the <matmut.com> domain name registration for $10,000).
Respondent registered the <chinadiesel.com> domain name in April 2006, after Complainant inadvertently let its registration of the domain name lapse. Respondent is using the domain name to resolve to websites containing links to third-party websites, some of which directly compete with Complainant. The Panel finds Respondent is using the <chinadiesel.com> domain name to disrupt Complainant’s business by diverting Internet users to Complainant’s competitors. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See 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)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Additionally, the website resolving from the <chinadiesel.com> domain name displays
links to sites that are related to, and in direct competition with,
Complainant’s business. The Panel infers
that Respondent receives pay-per-click fees for hosting these links. Since the disputed domain name is identical
to Complainant’s mark, Internet users are likely to be confused as to
Complainant’s affiliation or sponsorship of the disputed domain name and
resolving website. The Panel finds this
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”); see
also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”).
Lastly, Complainant held the disputed domain name from its
initial registration on March 7, 1996 until the registration was inadvertently
allowed to lapse on March 8, 2006.
Respondent took over the registration of the <chinadiesel.com> domain name sometime in April
2006. The Panel finds that this is
further evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Aurbach v. Saronski,
FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration
was previously held, developed and used by Complainant, opportunistic
registration of the domain name by another party indicates bad faith, absent
any justification that illustrates legitimate use.”); see also RH-Interactive
Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16,
2003) (holding that the complainant’s prior registration and use of the disputed
domain name and the respondent’s registration of the domain name immediately
after the complainant failed to timely renew its registration “gives rise to an
inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).
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 <chinadiesel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret), Panelist
Dated: December 22, 2009
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