Wilson Sporting Goods Co. v. Jin Zhe / Jinzhe
Claim Number: FA1202001430580
Complainant is Wilson Sporting Goods Co. (“Complainant”), represented by Terence P. O'Brien of Wilson Sporting Goods Co., Illinois, USA. Respondent is Jin Zhe / Jinzhe (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapwilsonrackets.com>, registered with Hang Zhou E-Business Services Co.Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012. The Complaint was submitted in both Chinese and English.
On February 22, 2012, Hang Zhou E-Business Services Co.Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheapwilsonrackets.com> do-main name is registered with Hang Zhou E-Business Services Co.Ltd. and that Respondent is the current registrant of the name. Hang Zhou E-Business Services Co.Ltd. has verified that Respondent is bound by the Hang Zhou E-Business Services 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 February 28, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 19, 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-@cheapwilsonrackets.com. Also on February 28, 2012, 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 March 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 pro-ceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturer and distributor of sporting goods and equipment, including tennis rackets.
Complainant holds registrations for its WILSON trademark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 1,559,821, registered October 10, 1989).
Respondent registered the <cheapwilsonrackets.com> domain name on October 17, 2011.
The corresponding website resolves to a web page that sells counterfeit tennis racquets, and is designed to appear to be affiliated with Complainant’s business.
Complainant has not given Respondent a license or other permission to use the WILSON trademark or to distribute products under that mark.
Respondent’s <cheapwilsonrackets.com> domain name is confusingly similar to Complainant’s WILSON mark.
Respondent lacks rights to and legitimate interests in the disputed domain name.
Respondent’s registration and use of the domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in its WILSON trademark under Policy ¶ 4(a)(i) by reason of its trademark registrations with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the marks ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES with the USPTO satisfied the requirement of demonstrating rights in the marks pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that a complainant had established rights in the BLOOMBERG mark under Policy ¶ 4(a)(i) through registration of the mark with the United States Patent and Trademark Office).
This is true without regard to the fact that Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that of Respondent’s residence or place of business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complain-ant has registered its trademark in the country of a respondent’s residence); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <cheapwilsonrackets.com> domain name is confusingly similar to Complainant’s WILSON trademark. The domain name incorporates the entire WILSON mark and adds only the generic term “cheap,” the descriptive term “rackets,” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, fail to avoid a finding of confusing similarity under the standards of the Policy. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), finding that a domain name is left con-fusingly similar to the mark of another from which it is derived by the addition of common terms, such as “buy.” See also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel there finding that adding to the mark of another, in creating a domain name, the term “batteries,” which described a complainant’s products, as well as the gTLD “.com,” did not adequately distin-guish the domain name from that complainant’s mark.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, when a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been given a license to use the WILSON mark or to distribute products under the mark. Moreover, the pertinent WHOIS information identifies the domain registrant only as “jinzhe / jin zhe,” which does not resemble the disputed domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003), finding that the relevant WHOIS information did not support a conclusion that a respondent was commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel there concluding that neither the relevant WHOIS information nor other evidence in the record supported a finding that a respondent was commonly known by the disputed domain name and so had no rights to or legitimate interests in a contested domain name under Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent does not use the disputed domain name in association with a bona fide offering of goods or services or a legitimate noncommercial or fair use in that Respondent employs the domain name to attempt to sell counterfeit products under the WILSON name. In the circumstances here presented, it is evident that the domain name, which is confusingly similar to Complainant’s WILSON trademark, is likely to lead consumers to believe that the website resolving from it is sponsored by Complainant. This effort by Respondent to pass oneself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
By employing the contested <cheapwilsonrackets.com> domain name, which is confusingly similar to Complainant’s WILSON trademark, to maintain a web page that offers imitations of Complainant’s products and creates the misimpression of an affiliation with Complainant, Respondent disrupts Complainant’s business. This is evidence that Respondent has registered and uses the domain name in bad faith within the meaning of Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that a complainant’s business was disrupted by a respondent’s registration and use of a disputed domain name for the purpose of selling counterfeit products); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products via a domain name that was confusingly similar to the mark of a complainant disrupted that complainant’s business, and, therefore, stood as evidence of bad faith regis-tration and use of the domain under Policy ¶ 4(b)(iii)).
Moreover, the website resolving from Respondent’s domain name misleads Internet users who may believe that the website is associated with Complainant’s business. Respondent plainly intends to profit from this confusion. This is evidence that Respondent registered and sues the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), finding that a respondent used a contested domain name to create confusion as to a possible relationship between a complainant and that respondent’s website, which sold counterfeit products in order to make a profit. See also H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), the panel there concluding that a respondent’s sale of counterfeit items via a website resolving from a domain name that was confus-ingly similar to the mark of another created the possibility of confusion between the domain name and a complainant’s business and therefore demonstrated bad faith registration and use of the domain under Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <cheapwilsonrackets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 13, 2012
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