national arbitration forum

 

DECISION

 

Kingston Technology Corporation v. gaoming

Claim Number: FA1005001324077

 

PARTIES

Complainant is Kingston Technology Corporation (“Complainant”), represented by J. Andrew Coombs, of J. Andrew Coombs, A Professional Corporation, California, USA.  Respondent is gaoming (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kingston-e.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2010 in both Chinese and English languages.

 

On May 13, 2010, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to the National Arbitration Forum that the <kingston-e.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(s).  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 May 25, 2010, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 14, 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@kingston-e.com by e-mail.  Also on May 25, 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 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <kingston-e.com> domain name is confusingly similar to Complainant’s KINGSTON mark.

 

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

 

3.      Respondent registered and used the <kingston-e.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Kingston Technology Corporation, is a large, independent seller of computer memory that was founded in 1987.  Complainant offers more than 2,000 memory products for computers, servers and printers, MP3 players, digital cameras and mobile phones.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its KINGSTON (e.g., Reg. No. 1,703,005 issued July 28, 1992) mark. 

 

Respondent, gaoming, registered the <kingston-e.com> domain name on April 11, 2010.  Respondent’s disputed domain name resolves to a website that appears to be Complainant’s official <kingston.com> domain name.

 

DISCUSSION

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 to show that it owns several trademark registrations with the USPTO for its KINGSTON (e.g., Reg. No. 1,703,005 issued July 28, 1992) mark.  The Panel finds that Complainant has sufficiently demonstrated that it owns rights in its KINGSTON mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO.  The Panel further finds that Complainant only needs to demonstrate that it possesses rights in its mark in some jurisdiction, and that the registration need not be within the country of Respondent’s residence under Policy ¶ 4(a)(i).  See 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).”); 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). 

 

Complainant contends that Respondent’s <kingston-e.com> domain name is confusingly similar to Complainant’s KINGSTON mark because it contains Complainant’s entire mark with the addition of a hyphen and the letter “e.”  Complainant contends that these changes and the addition of the generic top-level domain (“gTLD”) “.com,” are not sufficient to distinguish the disputed domain name from Complainant’s KINGSTON mark.    See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel finds that Respondent’s <kingston-e.com> domain name is confusingly similar to Complainant’s KINGSTON mark under Policy ¶ 4(a)(i).    

 

The Panel finds that Policy ¶ 4(a)(i) has been satisifed.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights and legitimate interests in the <kingston-e.com> domain name.  Complainant must first make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show it possesses 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).  The Panel finds that Complainant has made a prima facie case in support of its allegations.  The Panel further finds that Respondent’s failure to respond to these proceedings allows the Panel to draw such inferences that it deems appropriate in this matter.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).  However, the Panel will continue to analyze the elements of Policy ¶ 4(c) to determine whether Respondent possesses rights or legitimate interests in the <kingston-e.com> domain name.

 

Complainant contends that the WHOIS registration information for the <kingston-e.com> domain name identifies “gaoming” as the registrant of the disputed domain name, and as such Respondent is not commonly known by the disputed domain name.  Complainant further asserts that it has not granted Respondent permission to use its mark in any way.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) where the WHOIS information, as well as all other information on record, does not indicate that Respondent is commonly known by the disputed domain name.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Complainant argues that Respondent is attempting to pass itself off as Complainant by mimicking Complainant’s official <kingston.com> domain name.  Complainant submitted screen-shots of its official webpage and the webpage resolving from the disputed domain name as evidence of Respondent’s infringing use.  Complainant further argues that Respondent is using the <kingston-e.com> domain name to sell the unauthorized goods of Complainant and those of Complainant’s competitors.  The Panel finds that Respondent is not using the disputed 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 under Policy ¶ 4(c)(iii) where Respondent has essentially copied Complainant’s entire webpage and is attempting to pass itself off as Complainant by selling Complainant’s products as well as similar products of Complainant’s competitors.  See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Nokia Corp.  v. Eagle,  FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent is using the confusingly similar domain name to redirect Internet users to Respondent’s commercial website where Respondent is selling the electronic memory goods of Complainant without authorization, as well as the goods of Complainant’s competitors.  Complainant alleges that Respondent’s use interrupts and disrupts Complainant’s online sales and services available to the public.  The Panel finds that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s products and services to Respondent’s website, where Respondent sells Complainant’s goods without authorization as well as the goods of Complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).

 

Complainant further argues that Respondent is intentionally using the disputed domain name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the sponsorship, affiliation and endorsement of the website.  Complainant has submitted evidence to show that Respondent is attempting to pass itself off as Complainant by implementing a nearly identical webpage layout as found on Complainant’s official <kingston.com> domain name.  Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(i) by creating a likelihood of confusion as to the ownership and affiliation of Respondent’s domain name in order to sell unauthorized goods of Complainant and similar goods of Complainant’s competitors.  See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.     

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <kingston-e.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  June 18, 2010

 

 

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