Weatherford/Lamb, Inc. v. Anping Hengyuan Hardware net industry product Co.,Ltd. / zhongqiang hu
Claim Number: FA1205001443929
Complainant is Weatherford/Lamb, Inc. (“Complainant”), represented by Tiffany D. Gehrke of Marshall Gerstein & Borun, Illinois, USA. Respondent is Anping Hengyuan Hardware net industry product Co.,Ltd. / zhongqiang hu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnsonscreens.net>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2012; the National Arbitration Forum received payment on May 14, 2012. The Complaint was submitted in Chinese and English.
On May 16, 2012, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <johnsonscreens.net> 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 May 29, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 18, 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@johnsonscreens.net. Also on May 29, 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 June 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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
1. Complainant owns multiple trademark registrations worldwide for the JOHNSONSCREENS and Design mark, including registrations with the following trademark authorities:
i. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 3,120,623 registered May 5, 2004);
ii. India’s Controller General of Patents Designs and Trademarks (“CGPDTM”) (e.g., Reg. No. 1,189,616 registered April 4, 2003);
iii. Japanese Patent Office (“JPO”) (Reg. No. 4,829,109 registered December 24, 2004);
iv. Mexico’s Institute of Industrial Property (“MIIP”) (Reg. No. 808,312 registered May 22, 2003); and
v. United States Patent and Trademark Office ("USPTO") (Reg. No. 2,853,672 registered June 15, 2004).
2. Complainant uses its mark on products in the water infrastructure, fluid processing, and industrial filtration markets.
3. Complainant uses many domain names to market its products including, <johnsonscreens.com>, <johnsonscreens.co.jp>, and <johnsonscreens.com.au>.
4. Respondent, Anping Hengyuan Hardware net industry product Co.,Ltd. / zhongqiang hu, registered the <johnsonscreens.net> domain name on July 21, 2010.
5. Respondent’s resolving website advertises and sells goods in direct competition with those of Complainant, specifically selling industrial screening products.
6. Respondent’s website features copyright protected photographs from Complainant’s <johnsonscreens.com> website, as well as language indicating that the owner of the website produces and sells JOHNSONSCREENS industrial screens.
7. Respondent’s <johnsonscreens.net> domain name is identical to Complainant’s JOHNSONSCREENS marks.
8. Respondent is not commonly known by the disputed domain name and there is no business relationship between Respondent and Complainant.
9. Respondent’s competing use of the disputed domain name does not confer rights or legitimate interests to Respondent in the disputed domain name.
10. Respondent’s knowledge of Complainant and its rights in the mark also precludes a finding that Respondent has rights or legitimate interests in the disputed domain name.
11. Respondent registered the disputed domain name in bad faith in order to disrupt Complainant’s business through a competing use.
12. Respondent registered and is using the disputed domain name in bad faith by commercially gaining from the confusion caused to Internet users and Complainant’s customers as to Complainant’s affiliation with the website.
13. Respondent’s knowledge of Complainant and its rights in the JOHNSONSCREENS mark prior to registering the disputed domain name is further evidence of Respondent’s bad faith registration and use of the disputed domain name.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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:
(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.
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.”).
Complainant argues that its “multiple trademark registrations throughout the world for the JOHNSONSCREENS mark establish Complainant’s rights in the mark pursuant to ICANN Policy ¶ 4(a)(i).” In furtherance of that argument, Complainant submits evidence to show that it owns the JOHNSONSCREENS and Design mark with the OHIM (Reg. No. 3,120,623 registered May 5, 2004); CGPDTM (e.g., Reg. No. 1,189,616 registered April 4, 2003); JPO (Reg. No. 4,829,109 registered December 24, 2004); MIIP (Reg. No. 808,312 registered May 22, 2003); and USPTO (Reg. No. 2,853,672 registered June 15, 2004). UDRP precedent has established that a complainant may be granted rights under Policy ¶ 4(a)(i) in a design mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). Respondent is from China and Complainant has not supplied evidence of a trademark registration for the JOHNSONSCREENS and Design mark within the Chinese jurisdiction. However, UDRP precedent has found that, if a Complainant can establish trademark rights to its asserted mark in any jurisdiction, Policy ¶ 4(a)(i) rights attach. 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). Therefore, the Panel finds that Complainant has established rights in its JOHNSONSCREENS mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Next, Complainant asserts that the <johnsonscreens.net> domain name is identical to Complainant’s JOHNSONSCREENS mark. Complainant notes that the domain name contains its entire mark while only adding the generic top-level domain (“gTLD”) “.net,” which Complainant argues has been deemed irrelevant under Policy ¶ 4(a)(i). The Panel agrees. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Further, Complainant’s trademark registration of a design mark has been found by prior UDRP panels to be insignificant to an identical or confusingly similar analysis under Policy ¶ 4(a)(i). See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). The Panel finds that the <johnsonscreens.net> domain name is identical to Complainant’s JOHNSONSCREENS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant contends that Respondent is not now, and has not been, commonly known by the disputed domain name. Complainant points to the WHOIS information, which identifies the domain name registrant as “Anping Hengyuan Hardware net industry product Co., Ltd. / zhongqiang hu,” to argue that there is no relationship between the registrant and the disputed domain name itself. Complainant also argues that Respondent has no business relationship with Complainant. The Panel finds, under the facts and evidence available, that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 argues that Respondent uses the <johnsonscreens.net> domain name to “divert consumers away from Complainant’s domains towards its own website where it offers competing goods.” Complainant supplies screenshots of Respondent’s website that support Complainant’s claims. Complainant further argues that Respondent’s operation of a competitive commercial website at the identical <johnsonscreens.net> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(a)(i). The Panel agrees and finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <johnsonscreens.net> domain name under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); 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).
Complainant has proven this element.
Complainant asserts that Respondent has intentionally attempted to disrupt, and is currently disrupting, Complainant’s business by using the <johnsonscreens.net> domain name to sell competing goods. Complainant argues that Respondent’s disruption of its business constitutes bad faith under Policy ¶ 4(b)(iii). The Panel finds that Respondent is using the disputed domain name to market and sell directly competing goods and services and, therefore, finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See 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).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Further, Complainant argues that Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant and its mark. Complainant asserts that Respondent not only registered the <johnsonscreens.net> domain name featuring its mark entirely, but has also posted copyright protected photographs of Complainant’s products on the resolving website. Through such misappropriation, Complainant argues that Respondent commercially benefits by selling its competing goods and services. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Lastly, Complainant contends that Respondent was aware of Complainant’s prior use of the JOHNSONSCREENS mark prior to Respondent’s registration and use of the disputed domain name. Complainant asserts that it has been operating under the JOHNSONSCREENS mark for 100 years and has been operating worldwide for many years. Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the JOHNSONSCREENS mark and that from this knowledge Respondent registered the disputed domain name in bad faith. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the JOHNSONSCREENS mark, and finds that Respondent registered and has been using the <johnsonscreens.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <johnsonscreens.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 28, 2012
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