The ERGO Baby Carrier, Inc. v. henghao / zhan jianzong
Claim Number: FA1107001399393
Complainant is The ERGO Baby Carrier, Inc. (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, Washington D.C., USA. Respondent is henghao / zhan jianzong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ergobabycarrierergo.com>, registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 19, 2011; the National Arbitration Forum received payment on July 19, 2011. Complainant also electronically submitted a Chinese language Complainant to the National Arbitration Forum on July 20, 2011.
On July 20, 2011, JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD. confirmed by e-mail to the National Arbitration Forum that the <ergobabycarrierergo.com> domain name is registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD. and that Respondent is the current registrant of the name. JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD. has verified that Respondent is bound by the JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 21, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 10, 2011 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@ergobabycarrierergo.com. Also on July 21, 2011, the Chinese language 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 August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <ergobabycarrierergo.com> domain name is confusingly similar to Complainant’s THE ERGO BABY CARRIER mark.
2. Respondent does not have any rights or legitimate interests in the <ergobabycarrierergo.com> domain name.
3. Respondent registered and used the <ergobabycarrierergo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The ERGO Baby Carrier, Inc., is a manufacturer, wholesaler, and retailer of baby wearing products and accessories. Complainant owns two trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the THE ERGO BABY CARRIER mark (e.g., Reg. No. 2,994,269 registered September 13, 2005). Complainant uses the mark as the product name for its baby carrying devices.
Respondent, henghao / zhan jianzong, registered the disputed domain name on March 15, 2011. The disputed domain name resolves to a website which appears to have copied Complainant’s own website presenting an identical homepage. From this site, Internet users may purchase goods from Respondent; however, as many Internet users have failed to receive any products after a purchase or have received counterfeit goods, the primary purpose of the site appears to be phishing.
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 argues that it has established its rights in the THE ERGO BABY CARRIER mark by registering it with the USPTO. Complainant has provided sufficient evidence in the form of trademark certificates which verify that the mark is duly registered and owned by Complainant. Therefore, the Panel finds that Complainant has established its rights in the THE ERGO BABY CARRIER mark under Policy ¶ 4(a)(i) by registering it with the USPTO (e.g., Reg. No. 2,994,269 registered September 13, 2005). 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).
Complainant also argues that Respondent’s <ergobabycarrierergo.com> domain name is confusingly similar to its THE ERGO BABY CARRIER mark. The disputed domain name incorporates the entire distinctive portion of the mark while adding the generic top-level domain “.com,” removing the spaces and the term “the” from the mark, and adding the term “ergo,” which is descriptive of Complainant’s products. The Panel finds that the changes made to Complainant’s mark by Respondent fail to sufficiently differentiate the disputed domain name from Complainant’s THE ERGO BABY CARRIER mark, making the two confusingly similar under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been established.
The Panel finds that Complainant has made a prima facie case against Respondent indicating that Respondent lacks rights or legitimate interests in the disputed domain name. Because of this, the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name due to Respondent’s failure to file a Response in this matter. See 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.”). However, the Panel will still examine the entire record and make a determination regarding Respondent’s rights or legitimate interests in the disputed domain name in accord with the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “henghao / zhan jianzong.” Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. Based upon the WHOIS information and the lack of other evidence on record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a site that is identical to Complainant’s own legitimate website. It appears as though the purpose of the website is two-fold. First, the website offer goods for sale but, often times when Internet users make purchases, the goods either will not be received or the purchaser will receive a counterfeit product. Second, because of the need for Internet users to enter their sensitive credit and personal information, Respondent is able to phish with the website and use the information collected for its own ends. The Panel finds that using the disputed domain name to sell counterfeit goods in competition with Complainant and to phish for information is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See 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)); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services 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 established.
Complainant claims that Respondent’s disputed domain name disrupts its business evidencing bad faith registration and use by Respondent. The disputed domain name resolves to a site purportedly offering goods for sale that appear to be from Complainant and in direct competition with Complainant’s own legitimate product offerings. Internet users may arrive at Respondent’s site and purchase goods from Respondent instead of Complainant due to the nature of the website. The Panel finds that this use disrupts Complainant’s business providing affirmative evidence of Complainant bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because it offers competing goods for sale from a website which is nearly identical to Complainant’s own website. Respondent’s disputed domain name resolves to a site offering goods for sale. The website also appears to be nearly identical to Complainant’s own website. Respondent quite likely generates revenue from the sale of goods from the website. The Panel finds that Respondent’s attempts to pass itself as Complainant and sell competing goods for profit constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”)
Finally, Complainant also contends that Respondent is phishing for information from Internet users that arrive at Respondent’s website. Not only are goods for sale at the disputed domain name resolving website, many Internet users have reported that they have not received goods after entering their personal and financial information into the site. The Panel finds that this use that Respondent has manifested through the disputed domain name constitutes phishing and as result is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ergobabycarrierergo.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: August 17, 2011
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