national arbitration forum

 

DECISION

 

Norgren, Inc. v. liuhongan

Claim Number: FA1112001419643

 

PARTIES

Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA.  Respondent is liuhongan (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2011; the National Arbitration Forum received payment on December 12, 2011The Complaint was submitted in both Chinese and English.

 

On December 18, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <norgrenzk.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 19, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 9, 2012 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@norgrenzk.com.  Also on December 19, 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 January 19, 2012, 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 (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 a 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 <norgrenzk.com> domain name is confusingly similar to Complainant’s NORGREN mark.

 

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

 

3.    Respondent registered and used the <norgrenzk.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Norgren, Inc., uses its NORGREN mark in connection with pneumatic and hydraulic products and services, offered around the world.  Complainant holds trademark registrations for its NORGREN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 950,639 registered January 16, 1973) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 292,354 registered July 10, 2007).

 

Respondent, liuhongan, registered the <norgrenzk.com> domain name on March 14, 2011.  The disputed domain name resolves to a website that sells products, such as pneumatic and hydraulic products, that are either Complainant’s products or products that compete with Complainant’s products.

 

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

 

The Panel finds that Complainant’s trademark registrations are sufficient evidence for Complainant to establish rights in its NORGREN mark under Policy ¶ 4(a)(i).  See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”); see also Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).

 

Respondent’s <norgrenzk.com> domain name contains Complainant’s entire NORGREN mark and adds the letters “z” and “k” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  As the Panel deems these additions fail to adequately distinguish the disputed domain name from Complainant’s mark, the Panel concludes that Respondent’s <norgrenzk.com> domain name is confusingly similar to Complainant’s NORGREN mark for the purposes of Policy ¶ 4(a)(i).  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); 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.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <norgrenzk.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <norgrenzk.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent does not present any evidence that it is commonly known by the <norgrenzk.com> domain name since Respondent failed to respond to this case.  Complainant states that Respondent does not have a relationship with Complainant that would allow Respondent to register a disputed domain name containing Complainant’s NORGREN mark.  The WHOIS information identifies “isliuhongan” as the registrant of the <norgrenzk.com> domain name.  Therefore, the Panel finds that Respondent is not commonly known by the <norgrenzk.com> domain name pursuant to Policy ¶ 4(c)(ii).  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 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).

 

Respondent uses the <norgrenzk.com> domain name to resolve to a Chinese language website that sells products that either are Complainant’s products or that compete directly with Complainant’s products.  Complainant states that Respondent is not authorized to sell Complainant’s products.  The Panel finds Respondent’s use of the <norgrenzk.com> domain name to sell Complainant’s products and competing products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <norgrenzk.com> domain name under Policy ¶ 4(c)(iii).  See 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); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

The Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <norgrenzk.com> domain name resolves to a website that sells Complainant’s products and products that compete with Complainant’s products, which disrupts Complainant’s business.  Therefore, the Panel determines Respondent registered and uses the <norgrenzk.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See 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); see also 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).”).

 

Respondent registered the confusingly similar <norgrenzk.com> domain name for the purpose of selling Complainant’s products and the products of Complainant’s competitors.  The Panel infers that Respondent chose the disputed domain name to take advantage of Internet users confused as to Complainant’s affiliation with the disputed domain name.  Respondent seeks to commercially benefit from this confusion by selling Complainant’s products and the products of Complainant’s competitors.  The Panel holds that this is evidence that Respondent registered and uses the <norgrenzk.com> domain name in bad faith according to Policy ¶ 4(b)(iv).  See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the NORGREN mark.  Due to Respondent’s use of the disputed domain name to sell Complainant’s products, the Panel presumes that Respondent had actual knowledge of Complainant’s rights in its NORGREN mark.  Therefore, the Panel also finds bad faith registration and use of the <norgrenzk.com> domain name under Policy ¶ 4(a)(iii).  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  

 

The Panel finds Policy ¶ 4(a)(iii) is 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 <norgrenzk.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  January 26, 2012

 

 

 

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