National Arbitration Forum

 

DECISION

 

Panduit Corp. v. sunxunen/enshenglidianziyouxiangongsi

Claim Number: FA1110001411691

 

PARTIES

Complainant is Panduit Corp. (“Complainant”), represented by Sydney R. Kokjohn of McDonnell Boehnen Hulbert & Berghoff LLP, Illinois, USA.  Respondent is sunxunen/enshenglidianziyouxiangongsi (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pangensolutions.asia>, registered with Xin Net Technology Corporation.

 

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.

 

Honorable James A. Carmody and Honorable Robert T. Pfeuffer as Panelists, and Dr. Li Hu as Presiding Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2011; the National Arbitration Forum received payment on October 17, 2011.  The Complaint was submitted in both Chinese and English.

 

On October 17, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <pangensolutions.asia> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 25, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@usa-xerox.com.  Also on October 25, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 23, 2011, pursuant to Complainant’s request to have the dispute decided by a three-member Pane, the National Arbitration Forum appointed Honorable Carolyn M. Johnson, (Ret.) and Honorable Robert T. Pfeuffer, (Ret.) as Panelists, and Dr. Li Hu as Presiding 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 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

1. Complainant owns U.S. Trademark and Service Mark Registrations for PANGEN (No. 3146973 issued September 19, 2006 and No. 3256922 issued June 26, 2007). The marks are jointly owned by Complainant Panduit Corp. and General Cable Technologies Corporation (“General Cable”). In addition, joint owner General Cable also registered the domain name <pangensolutions.com> in 2004 and has used the domain name continuously since then to sell products made by the joint owners of the mark. The <pangensolutions.com> domain name resolves to Complainant and General Cable’s website at <pangensolutions.com>, where, since 2005, Complainant and General Cable have been providing customers with information about the true and legitimate PANGEN products.

 

Complainant has rights in the disputed domain names through its ownership and use of the famous PANGEN marks. The marks are widely recognized and exclusively identify Complainant, Panduit Corp., and General Cable.

 

2. Complainant is a world-class developer and provider of leading-edge solutions that help telecommunication companies optimize their physical infrastructure through simplification, agility, flexibility, and operational efficiency. Complainant’s PANGEN marks have become famous due to the duration and extent of their use and the degree of recognition of the marks.

 

The goods being sold by Respondent are counterfeit PANGEN goods. Furthermore, Respondent is not and has never been an authorized seller or representative of Complainant’s goods. Respondent has never purchased goods directly from Complainant or General Cable. Respondent registered the domain name at issue on February 28, 2011, well after Complainant began using its marks. The <pangensolutions.asia> domain name resolves to a copycat website that offers competing-counterfeit versions of Complainant’s products and uses Complainant’s copyrighted pictures. Respondent was obviously aware of Complainant’s marks prior to registering the domain name <pangensolutions.asia>, in light of the fact that Respondent’s business is based on the sale of counterfeits of Complainant’s products.

 

(a) The disputed domain name is essentially identical or confusingly similar to the Complainant’s Marks under Policy ¶4(a)(i).

 

Respondent’s <pangensolutions.asia> domain name is directly and confusingly incorporates Complainant’s PANGEN marks. The law is well-established that the addition of a generic term such as “solutions” does not sufficiently distinguish a domain name from a mark. Here the disputed domain name incorporates Complainant’s registered PANGEN marks, and is confusingly similar thereto. Moreover, Respondent’s domain name for its <pangensolutions.asia> website is essentially identical to the domain name for Complainant’s and General Cable’s <pangensolutions.com> website, except that Respondent has substituted the <.asia> generic domain extension in place of the <.com> generic domain extension.

 

(b) Respondent has no rights or legitimate interest in the domain name <pangensolutions.asia> under Policy ¶ 4(a)(ii).

 

Respondent does not meet any of the four circumstances set forth in the UDRP Policy 4(c) for demonstrating rights or legitimate interests in the disputed domain name. Respondent is not the owner or beneficiary of trade or service marks that are identical to the domain name; Respondent has not used the domain name in connection with a bona fide offering of goods or services; Respondent is not commonly known by the domain name; and Respondent is not making legitimate noncommercial or fair use of the domain name.

 

(c) Respondent has registered and used the disputed domain name in bad faith Under Policy ¶ 4(a)(iii).

 

By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark. Moreover, Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor

 

B. Respondent

No response was received from the Respondent in this case proceeding.

 

FINDINGS

Complainant is a well-known developer and provider of a comprehensive line of physical infrastructure solutions for the telecommunications industry.

 

The Complainant since 2005 begins to use and since 2006 owns United States trademark registrations as co-owner for PANGEN marks, which, through the Complainant’s extensive use and promotion, have become famous throughout the world.

 

PANGEN mark joint owner and Complainant’s partner General Cable also registered the domain name <pangensolutions.com> in 2004 which resolves to Complainant and General Cable’s website at <pangensolutions.com>, where, since 2005, Complainant and General Cable have been providing customers with information about the PANGEN products made by the joint owners of the mark.

 

The Respondent is a Chinese natural person sunxunen who is the staff-member of a Chinese company named as “enshenglidianziyouxiangongsi” with its address in Beijing.

 

The Respondent registered the disputed domain name on February 28, 2011.

 

The Respondent was not previously known as, or associated with, the mark PANGEN.

 

The Respondent used the disputed domain name to resolve to a web site where it is used to sell competing-counterfeit versions of Complainant’s products under the Complainant’s PANGEN images in the name “enshenglidianziyouxiangongsi” and “PanGen Cable Co., LTD”.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)  the 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 claims that it provides telecommunications software under its PANGEN mark at least since 2005. Complainant provides evidence of its trademark registrations as co-owner with the United States Patent and Trademark Office (“USPTO”) for its PANGEN mark (e.g., Reg. No. 3,146,973 registered September 19, 2005). This panel holds that evidence of a trademark registration with the USPTO is sufficient to establish Policy ¶ 4(a)(i) rights in a mark. See 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); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). This panel further holds that Complainant is not required to register a mark within a country that Respondent resides or operates in order to establish rights. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Therefore, the Panel hereby concludes that Complainant has established rights in its PANGEN mark under Policy ¶ 4(a)(i).

 

Complainant alleges that the disputed domain name <pangensolutions.asia> is confusingly similar to Complainant’s PANGEN mark. Complainant notes that the disputed domain name is comprised of Complainant’s mark, the descriptive term “solutions,” and the country-code top-level domain (“ccTLD”) “.asia.” The panel has found the additions of a descriptive term “solutions,” and the country-code top-level domain (“ccTLD”) “.asia.” fail to adequately distinguish the disputed domain name <pangensolutions.asia> from Complainant’s PANGEN mark. See Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. 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); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). 

 

The Panel hereby holds that Respondent’s <pangensolutions.asia> domain name is confusingly similar to Complainant’s PANGEN mark pursuant to Policy ¶ 4(a)(i).

 

 

Rights or Legitimate Interests

 

The 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.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

In the case, the Complainant asserts that Respondent is not affiliated with Complainant nor is Respondent permitted to use the PANGEN mark in a domain name.  Furthermore, Complainant argues that Respondent is not commonly known by the <pangensolutions.asia> domain name. Complainant argues that Respondent does not own any trademark or service mark rights in the disputed domain name. Complainant provides the WHOIS information, which lists the registrant of the disputed domain name as “sunxunen” and registrant organization as “enshenglidianziyouxiangongsi.” This Panel determines that Respondent is not commonly known by the <pangensolutions.asia> domain name under Policy ¶ 4(c)(ii), based on the fact that the WHOIS information is not similar to the disputed domain name and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant contends that Respondent’s <pangensolutions.asia> domain name resolves to a website, identical to Complainant’s website, where Respondent sells counterfeit versions of Complainant’s products. The Panel agrees with Complainant and holds that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <pangensolutions.asia> domain name. 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).

 

The Panel holds that Complainant has met its burden of proof, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. Respondent did not deny Complainant’s assertions and also did not produce any evidence to show that it does have rights or legitimate interests in the disputed domain name.

 

The Panel further holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

 

Considering the fact that Respondent used the disputed domain name web site to sell competing-counterfeit versions of Complainant’s products under the Complainant’s PANGEN images, the Panel finds that Respondent “knew” or “ought to have known” the existence/the prior PANGEN trademark or service mark rights of the Complainant. The Respondent’s registration of the disputed domain name incorporating the Complainant’s PANGEN mark was therefore clearly in bad faith.

 

According to Complainant, Respondent’s registration and use of the <pangensolutions.asia> domain name to sell counterfeit versions of Complainant’s products disrupts Complainant’s business by creating increased competition and harming Complainant’s image. Based on all evidence at hand, the panel agrees with Complainant and finds that Respondent’s sale of competing or counterfeit products disrupts Complainant’s business and constitutes bad faith registration and use of the <pangensolutions.asia> domain name pursuant to 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 Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).

 

Complainant argues that Respondent is attempting to attract Internet users to the resolving website by creating confusion as to Complainant’s affiliation with the disputed domain name. Complainant claims that Respondent is attempting to confuse Internet users into believing that they are buying products from Complainant or one of Complainant’s unauthorized resellers. Complainant contends that Respondent commercially benefits from this confusion by selling counterfeit versions of Complainant’s products.  The Panel holds that Respondent registered and uses the <pangensolutions.asia> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent used the disputed domain name to sell counterfeit versions of Complainant’s products in the name of so-called “PanGen Cable Co., LTD” and mislead Internet users by implying that Respondent was affiliated with Complainant. See 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).”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).

 

The Panel concludes that the disputed domain name has been registered and is being used in bad faith.

 

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 <pangensolutions.asia> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dr. Li Hu, Presiding Panelist

Honorable James A. Carmody, Panelist

Honorable Robert T. Pfeuffer, Panelist

 

Dated: December 12, 2011