Norgren, Inc. v. yinshiguo
Claim Number: FA1112001419650
Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group, Colorado, USA. Respondent is yinshiguo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norgrenhz.com>, registered with Xin Net Technology Corporation.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2011; the National Arbitration Forum received payment on December 12, 2011. The Complaint was submitted in both Chinese and English.
On December 20, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <norgrenhz.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 22, 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 11, 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@norgrenhz.com. Also on December 22, 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 January 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <norgrenhz.com> domain name is confusingly similar to Complainant’s NORGEN mark.
2. Respondent does not have any rights or legitimate interests in the <norgrenhz.com> domain name.
3. Respondent registered and used the <norgrenhz.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Norgren, Inc., holds trademark registrations for its NORGREN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 950,639 registered Jan. 16, 1973) and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 292,354 registered July 10, 2007). Complainant uses the NORGREN mark to design, market, and sell a wide variety of products, such as pneumatic and hydraulic products.
Respondent, yinshiguo, registered the <norgrenhz.com> domain name on March 21, 2011. The disputed domain name resolves to a website that sells Complainant’s pneumatic and hydraulic products and competing pneumatic and hydraulic products.
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 rights in its NORGREN mark under Policy ¶ 4(a)(i). In support of this claim, Complainant provides the Panel with a list of its trademark registrations with the USPTO (e.g., Reg. No. 950,639 registered Jan. 16, 1973) and the SAIC (Reg. No. 292,354 registered July 10, 2007). The Panel determines that Complainant’s trademark registrations sufficiently demonstrate Complainant’s rights in the NORGREN mark for the purposes of 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 Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <norgrenhz.com> domain name is confusingly similar to Complainant’s NORGREN mark pursuant to Policy ¶ 4(a)(i). Complainant claims that the disputed domain name simply contains a combination of Complainant’s NORGREN mark with the letters “h” and “z” and the generic top-level domain (“gTLD”) “.com.” The Panel determines that the addition of two letters fails to remove the disputed domain name from the realm of confusing similarity, and the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Consequently, the Panel concludes that Respondent’s <norgrenhz.com> domain name is confusingly similar to Complainant’s NORGREN mark pursuant to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <norgrenhz.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). 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.”). The Panel finds Complainant has 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 <norgrenhz.com> domain name. See 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). 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).
Complainant argues that Respondent is not commonly known by the <norgrenhz.com> domain name for the purposes of Policy ¶ 4(c)(ii). In support of this argument, Complainant contends that Respondent and Complainant do not have a relationship that would allow Respondent to use Complainant’s NORGREN mark. Aside from Complainant’s arguments, the Panel also examines the WHOIS information, which lists the registrant of the <norgrenhz.com> domain name as “yinshiguo.” The Panel determines that the WHOIS information is not similar to the disputed domain name. Respondent did not respond to this case and, therefore, did not make any arguments that would refute Complainant’s allegations and the WHOIS information. Thus, the Panel finds that Respondent is not commonly known by the <norgrenhz.com> domain name under 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 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 alleges that Respondent makes 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 <norgrenhz.com> domain name. Complainant contends that Respondent’s <norgrenhz.com> domain name resolves to a website that sells Complainant’s pneumatic and hydraulic products and the same products made Complainant’s competitors. Complainant avers that Respondent is not authorized to sell its products. Complainant provides screen shots of the resolving website that the Panel determines corroborates Complainant’s claims. Based on this evidence, the Panel holds that Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <norgrenhz.com> domain name pursuant to Policy ¶ 4(c)(iii). See 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); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel deems Policy ¶ 4(a)(ii) satisfied.
Complainant avers that Respondent’s registration and use of the <norgrenhz.com> domain name disrupts Complainant’s business, constituting bad faith registration and use. Complainant claims that Respondent uses the <norgrenhz.com> domain name to host a website that sells Complainant’s products and the products of Complainant’s competitors. Complainant asserts that Respondent is not authorized to sell Complainant’s products. Therefore, the Panel finds that Respondent registered and uses the <norgrenhz.com> domain name in bad faith under Policy ¶ 4(b)(iii) by competing with Complainant and disrupting Complainant’s business. 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 Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent also registered and uses the <norgrenhz.com> domain name in bad faith because Respondent attempts to create confusion about Complainant’s sponsorship of the disputed domain name and profit from that confusion. Complainant argues that Respondent profits from the sale of Complainant’s products and the products of Complainant’s competitors. As Respondent registered a confusingly similar disputed domain name for this purpose, the Panel determines that Respondent registered and uses the <norgrenhz.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also 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.”).
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. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because the Panel finds that Respondent had actual notice of Complainant’s trademark rights. 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 deems Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <norgrenhz.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: January 30, 2012
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