Kingston Technology Corporation v. yu ting
Claim Number: FA1005001323835
Complainant is Kingston Technology Corporation (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA. Respondent is yu ting (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kingstonhk.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on May 10, 2010. The Complaint was
submitted in both Chinese and English.
On May 25, 2010, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <kingstonhk.com> domain name is registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN and that Respondent is the current registrant of the name. BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN 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 June 2, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kingstonhk.com. Also on June 2, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kingstonhk.com> domain name is identical to Complainant’s KINGSTON mark.
2. Respondent does not have any rights or legitimate interests in the <kingstonhk.com> domain name.
3. Respondent registered and used the <kingstonhk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kingston
Technology Corporation, was founded in 1987 and is an independent seller of
computer memory and offers more than 2,000 memory products that support devices
such as computers, servers and printers, MP3 players, digital cameras and
mobile phones. Complainant holds a
trademark registration for its KINGSTON mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,703,005 issued July 28, 1992).
Respondent, yu ting, regsitered the disputed domain name on March 9, 2010. The disputed domain name resolves to a website that offers counterfeit versions of Complainant’s products as well as competing goods from third-parties.
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.
The Panel finds that
Complainant’s registration of its KINGSTON mark with the USPTO is sufficient
evidence of its rights in the mark pursuant to Policy ¶ 4(a)(i). See
Expedia, Inc. v. Tan, FA 991075 (Nat.
Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered
with the USPTO, [the] complainant has met the requirements of Policy ¶
4(a)(i).”); see also Renaissance
Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter
whether the complainant has registered its trademark in the country in which
the respondent resides, only that it can establish rights in some
jurisdiction).
Respondent’s <kingstonhk.com>
domain name is confusingly similar
to Complainant’s KINGSTON mark.
Respondent’s disputed domain name incorporates the entirety of
Complainant’s mark and adds the geographic abbreviation for Hong Kong “hk” and
the generic top-level domain (“gTLD”) “.com.”
The Panel finds that alterations such as these are insufficient to
distinguish the disputed domain name from Complainant’s mark. See
Am. Online, Inc. v. Oxford
Univ., FA 114654 (Nat. Arb. Forum Aug. 21, 2002) (“Neither the addition of
an ordinary descriptive word nor a geographic qualifier transform Respondent’s
domain name into separate and distinct marks for the purpose of a Policy ¶
4(a)(i) analysis.”); see also Jerry Damson,
Inc. v. Tex. Int’l Prop. Assocs., FA
916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”).
Accordingly, the Panel finds that Respondent’s <kingstonhk.com> domain name is confusingly
similar to Complainant’s KINGSTON mark for the purposes of Policy ¶ 4(a)(i).
The
Panel finds that Policy ¶ 4(a)(i) is satisfied.
Pursuant to the requirements of Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case in support of its allegations that Respondent lacks rights and
legitimate interests in the disputed domain name before the burden will shift
to Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has made a
sufficient prima facie case and that
the burden has been transferred to Respondent, who has failed to submit a
Response to these proceedings. The Panel
infers from Respondent’s failure to respond to these proceedings that
Respondent lacks rights or legitimate interests in the disputed domain name. See
AOL LLC v. Gerberg, FA
780200 (Nat.
Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden
shifts to the respondent to show that it does have rights or legitimate
interest in the subject domain names.”); see
also Am. Express Co.
v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
Complainant asserts that Respondent is not authorized by Complainant to use any of Complainant’s marks. Complainant further asserts that Respondent is not commonly known by disputed domain name. The WHOIS information from the disputed domain name indicates that the registrant is “yu ting.” With no evidence in the record to the contrary, the Panel thus finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is using the domain name to direct users to a website that offers both counterfeit versions of Complainant’s products and competing goods from third-parties. The Panel finds Respondent’s use of the disputed domain name for such a purpose is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent is using the confusingly similar disputed domain name to redirect Internet users to a commercial website featuring goods and services that compete with Complainant’s memory products business. The Panel finds that Respondent’s use of the disputed domain name to provide Complainant’s potential customers with links to Complainant’s competitors constitutes a disruption of Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is intentionally using the disputed domain name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s KINGSTON mark as to the source, sponsorship, affiliation or endorsement of the website. The Panel infers that Respondent is receiving pay-per-click fees from the displayed third-party links to competitors and that therefore, Respondent is demonstrating bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <kingstonhk.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 8, 2010
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