national arbitration forum

 

DECISION

 

Norgren, Inc. v. andongpeng

Claim Number: FA1112001419654

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <norgrensz.com>, 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.

 

James A. Carmody, Esq., 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, 2011. The Complaint was submitted in both Chinese and English.

 

On December 15, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <norgrensz.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 16, 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 5, 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@norgrensz.com.  Also on December 16, 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

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 <norgrensz.com> domain name is confusingly similar to Complainant’s NORGREN mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Norgren, Inc., has registered the NORGREN mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. 292,354 registered July 10, 1987). Complainant operates in the motion and fluid control products industry.

 

Respondent, andongpeng, registered the disputed domain name on March 31, 2011. The disputed domain name resolves to website offering products made by Complainant’s competitors for sale.

 

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

 

Complainant has provided proof of its registrations of the NORGREN mark with the SAIC (e.g. Reg. No. 292,354 registered July 10, 1987) in support of its claim of rights in the NORGREN mark under Policy ¶ 4(a)(i). Previous panels have found that such registration with the Chinese trademark authority is sufficient to confer rights in a mark under Policy ¶ 4(a)(i). See Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s State Intellectual Property Office was sufficient to establish rights in the mark under 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 SIPO demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). The Panel finds that Complainant has established rights in the NORGREN mark under Policy ¶ 4(a)(i).

 

Complainant contends that the <norgrensz.com> domain name is confusingly similar to Complainant’s NORGREN mark within the meaning of Policy ¶ 4(a)(i). Respondent’s domain name wholly contains Complainant’s mark, adding the letters “sz” and the generic top-level domain (“gTLD”) “.com.” Complainant argues that the term “sz” represents the country code for Swaziland, and is thus considered a geographic identifier. Past panels have agreed that the addition of a geographic identifier does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Furthermore, the affixation of a gTLD can never distinguish a disputed domain name. See 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.”). The Panel concludes that disputed domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).  

 

The Panel holds that the burdens of Policy ¶ 4(a)(i) have been met.    

 

Rights or Legitimate Interests

 

When arguing a case under the Policy, Complainant shoulders the initial burden of presenting a prima facie case. Once this burden has been satisfied, as in the instant case, the burden then shifts to Respondent. 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.”). Some panels have found that a Respondent’s failure to submit a Response is a concession that Respondent lacks rights and legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Despite this, the Panel will continue to examine the record in the interest of fairness in order to determine whether such rights or legitimate interests do exist under Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <norgrensz.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “andongpeng,” which the Panel opines is not at all similar to the disputed domain name, indicating that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant further states it has never licensed Respondent’s use of the NORGREN mark in the disputed domain name. Respondent has failed to present the Panel with any evidence that it is in fact commonly known by the disputed domain name. This forces the Panel to conclude 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).

 

Complainant contends that the website housed at the disputed domain name is not being used in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name resolves to website offering products made by Complainant’s competitors for sale. Past panels have determined that using a disputed domain name to sell products or services that compete with a complainant’s business demonstrates a lack of rights or legitimate interests in a disputed domain name. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). The Panel finds that Respondent is not using the disputed domain name in accordance with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel holds that the burdens of Policy ¶ 4(a)(ii) have been met.   

 

Registration and Use in Bad Faith

 

Complaint argues that Respondent’s registration and use of the disputed domain name constitutes disruption of Complainant’s business in bad faith under Policy ¶ 4(b)(iii). Respondent’s operation at a confusingly similar domain name and provision of similar products increases the likelihood that Internet users will be misled into purchasing competing products from Respondent, when they had intended to purchase products from Complainant. Respondent’s website wrongfully usurps sales that would have otherwise gone to Complainant, thus disrupting Complainant’s business. The Panel holds that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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).”).

 

Complainant further argues that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s sale of similar products at a confusingly similar domain name evidences an intent to create confusion as to the source of Respondent’s website. Respondent hopes to capitalize off of this confusion by attracting more visitors to its site, and ultimately selling more products. In this way, Respondent seeks to realize a commercial gain by creating confusion as to Complainant’s affiliation with Respondent’s website. The Panel finds this type of business model to constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).    

 

Complainant also argues that Respondent’s registration and use of the disputed domain name could not have been without actual or constructive knowledge of Complainant’s rights in the NORGREN’S mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may find bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s rights in a given mark.  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 holds that Complainant has provided sufficient evidence to charge Respondent with actual knowledge of Complainant and its rights in the NORGREN mark, thereby proving that Respondent’s use and registration of the disputed domain name is in bad faith under Policy 4(a)(iii). 

 

The Panel holds that the burdens of Policy ¶ 4(a)(iii) have been met.   

 

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 <norgrensz.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  January 19, 2012

 

 

 

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