Digi-Key Corporation v. Cao Conggang
Claim Number: FA1107001400033
Complainant is Digi-Key Corporation (“Complainant”), represented by Alias Encore, Inc., California, USA. Respondent is Cao Conggang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <digi-key-parts.com>, registered with Guangzhou Ming Yang Information Technology Co., Ltd.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted both a Chinese language Complaint and an English language Complaint to the National Arbitration Forum electronically on July 22, 2011; the National Arbitration Forum received payment on July 22, 2011. The Complaint was submitted in both Chinese and English.
On July 26, 2011, Guangzhou Ming Yang Information Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <digi-key-parts.com> domain name is registered with Guangzhou Ming Yang Information Technology Co., Ltd and that Respondent is the current registrant of the name. Guangzhou Ming Yang Information Technology Co., Ltd has verified that Respondent is bound by the Guangzhou Ming Yang Information 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 27, 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 16, 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@digi-key-parts.com. Also on July 27, 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 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <digi-key-parts.com> domain name is confusingly similar to Complainant’s DIGI-KEY mark.
2. Respondent does not have any rights or legitimate interests in the <digi-key-parts.com> domain name.
3. Respondent registered and used the <digi-key-parts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Digi-Key Corporation, is a large global provider of electronic components. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,487,965 registered May 10, 1988), as well as the China State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1,528,847 registered February 28, 2001), for the DIGI-KEY mark.
Respondent, Cao Conggang, registered the disputed domain name on August 24, 2010. The disputed domain name resolves to an inactive website.
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 claims to have established its rights in the DIGI-KEY mark by registering it with both the SIPO (e.g., Reg. No. 1,528,847 registered February 28, 2001) and the USPTO (e.g., Reg. No. 1,487,965 registered May 10, 1988). Complainant has submitted sufficient evidence to verify that the marks are duly registered and that it is the rightful owner of said registrations. Based upon the governmental trademark registrations held by Complainant for the DIGI-KEY mark, the Panel finds that Complainant has satisfied the rights requirement of 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant also claims that Respondent’s <digi-key-parts.com> domain name is confusingly similar to its own DIGI-KEY mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com,” a hyphen “-,” and a term descriptive of Complainant’s products, “parts.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s DIGI-key mark under Policy ¶ 4(a)(i) because the changes made failed to sufficiently differentiate the disputed domain name from the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has offered sufficient evidence to make, what the Panel finds to be, a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name. Because of this finding, the burden now 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.”). Respondent has failed to file a Response in this matter which allows this Panel to assume it lacks rights or legitimate interests in the disputed domain name. 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 make no determinations regarding Respondent’s rights or legitimate interests in the disputed domain name before examining and analyzing the record fully and in accordance with the factors set out in Policy ¶ 4(c).
Under Policy ¶ 4(c), there are three ways Respondent may establish its rights in the mark. First, if Respondent is making a bona fide offering of goods or services it can establish rights under Policy ¶ 4(c)(i). Second, if Respondent is commonly known by the disputed domain name the Panel may find that it has rights in the disputed domain under Policy ¶ 4(c)(ii). Finally, if Respondent is engaging in a legitimate noncommercial or fair use of the disputed domain name it may have established rights in the mark pursuant to Policy ¶ 4(c)(iii).
In this case, the Panel finds that Respondent has failed to establish its rights or legitimate interests in the mark under any of the potential methods listed in Policy ¶ 4(c).
Respondent has offered no evidence that would indicate it is commonly known by the disputed domain name and the WHOIS information also does not support such a find as it identifies the registrant as “Cao Conggang.” The Panel finds that Respondent is not commonly known by the disputed domain name under 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).
The disputed domain name resolves to an inactive website and as such, does not fall under the above mentioned criteria for rights or legitimate interests created via use. The Panels finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor is it engaging in a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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 TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Under Policy ¶ 4(a)(iii), Complainant is required to prove that Respondent registered and used the disputed domain name in bad faith. Although Policy ¶ 4(b) offer ways in which Complainant may do so, the Panel finds that they are not the exclusive avenues to prove bad faith but are merely illustrative examples. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). As a result, the Panel finds that Complainant may utilize the totality of the circumstances surrounding Respondent’s registration and use to prove bad faith under Policy ¶ 4(a)(iii), if it is able to do so.
Complainant contends that Respondent has failed to make an active use of the disputed domain name constituting bad faith registration and use. Previous panels have determined that failing to use a confusingly similar domain name is an affirmative indication that the disputed domain name was registered and used in bad faith. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <digi-key-parts.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 26, 2011
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