national arbitration forum

 

DECISION

 

Weatherford/Lamb, Inc. v. zhu jie

Claim Number: FA1206001448967

 

PARTIES

Complainant is Weatherford/Lamb, Inc. (“Complainant”), represented by Tiffany D. Gehrke of Marshall Gerstein & Borun, Illinois, USA.  Respondent is zhu jie (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <johnsonscreens.org>, registered with 35 Technology Co., Ltd.

 

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.

 

          The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2012; the National Arbitration Forum received payment on June 15, 2012. The Complaint was submitted in both English and Chinese.

 

On June 19, 2012, 35 Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <johnsonscreens.org> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name.  35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology 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 June 22, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 12, 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.org.  Also on June 22, 2012, the Chinese langauge 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 July 20, 2012, pursuant to Complainant's request to have the dispute decided

by a single-member Panel, the National Arbitration Forum appointed The

Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A Complainant

Complainant made the following contentions.

1. Complainant uses the JOHNSONSCREEN mark in connection with well screens used in conjunction with deep wells for pumping liquids such as water and oil;

2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the JOHNSONSCREEN & Design mark (Reg. No. 2,853,672 registered June 15, 2004);

3. Complainant is the owner of the Chinese State Administration for Industry and Commerce (“SAIC”) registrations for the JOHNSONSCREEN & Design mark (e.g., Reg. No. 5,951,441 registered June 28, 2010;

4. The <johnsonscreens.org> domain name is identical to the JOHNSONSCREENS mark;

5. Respondent has no right or legitimate interest in the disputed domain name;

6. The disputed domain name was registered and used in bad faith;

7. Respondent is not commonly known by the <johnsonscreens.org> domain name;

8.  Respondent offers competing goods at the website to which the <johnsonscreens.org> domain name resolves;

9. The <johnsonscreens.org> domain name is disruptive to Complainant’s business;

10. The <johnsonscreens.org> domain name was registered and is used intentionally to divert Complainant’s customers by creating a likelihood of confusion as to the source of the <johnsonscreens.org> domain name so that Respondent may profit;

11. Respondent had constructive and/or actual knowledge of Complainant’s rights in the JOHNSONSCREENS mark prior to the registration of the <johnsonscreens.org> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1. Complainant Weatherford/Lamb, Inc. is a United States company and Johnson Screens is a wholly owned subsidiary of Complainant.  Founded in 1904, Johnson Screens has grown to be a global leader in water infrastructure, fluids processing, and industrial filtration.  

 

2. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the JOHNSONSCREEN & Design mark (Reg. No. 2,853,672 registered June 15, 2004).

 

3. Complainant is the owner of the Chinese State Administration for Industry and Commerce (“SAIC”) registrations for the JOHNSONSCREEN & Design mark (e.g., Reg. No. 5,951,441 registered June 28, 2010, the jurisdiction in which Respondent is domiciled.

 

4.  Respondent registered the <johnsonscreens.org> domain name on August 19, 2010 and caused it to be linked to a website that promotes goods and services in competition with those of Complainant.

 

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."

 

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.”).

 

Panel Note:  Language of the Proceedings

 

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.

 

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the JOHNSONSCREENS mark. Complainant provides the Panel with evidence of its ownership of the USPTO registration for the JOHNSONSCREENS & Design mark (Reg. No. 2,853,672 registered June 15, 2004). Additionally, Complainant provides the Panel with evidence of its ownership of the SAIC registrations for the JOHNSONSCREENS & Design mark in China (e.g., Reg. No. 5,951,441 registered June 28, 2010) and in that regard the Panel notes that Respondent is domiciled in China. Therefore, the Panel finds that Complainant has rights in JOHNSONSCREENS mark under Policy ¶ 4(a) (i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a) (i)).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s JOHNSONSCREENS mark.  Complainant contends that Respondent’s <johnsonscreens.org> domain name is identical to the JOHNSONSCREENS & Design mark. Complainant argues that Respondent has made no changes to Complainant’s mark in the disputed domain name and simply added the generic top-level domain (“gTLD”) “.org” to the mark in the disputed domain name. The Panel finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a) (i) analysis. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). Furthermore, the Panel finds that the lack of the design associated with Complainant’s mark in the domain name does not negate a finding that the <johnsonscreens.org> domain name is identical to the JOHNSONSCREENS & Design mark. See Commerce LLC v. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002) (“Moreover, the design elements of Complainant’s mark cannot be captured in a domain name and thus are considered irrelevant for the purposes of this analysis.”). Therefore, the Panel finds that Respondent’s <johnsonscreens.org> domain name is identical to Complainant’s JOHNSONSCREENS mark under Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s JOHNSONSCREENS mark and to use it in its domain name;

(b) Respondent has then decided to use the domain name to resolve to a website that promotes goods and services in competition with those of Complainant;

(c)  Respondent has engaged in these activities without the consent or approval

of Complainant;

(d)  Complainant contends that Respondent is not commonly known by the <johnsonscreens.org> domain name. Complainant alleges that “zhu jie” is listed as the domain name registrant on the <johnsonscreens.org> domain name’s WHOIS record and that there is no evidence to establish that Respondent’s legal name is reflective of the <johnsonscreens.org> domain name beyond the WHOIS record. The panels in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), held that the WHOIS record is strong evidence of whether or not a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <johnsonscreens.org> domain name pursuant to Policy ¶ 4(c)(ii);

 

(e) Complainant also contends that Respondent’s use of the <johnsonscreens.org> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant alleges that Respondent is using the disputed domain name to offer for sale products which compete with those that Complainant offers under the JOHNSONSCREENS mark in the well screens industry. Panels have consistently held that the use of a disputed domain name to operate a competing business does not give the respondent rights or legitimate interests in the disputed domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the <johnsonscreens.org> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent registered and is using the <johnsonscreens.org> domain name in bad faith. Complainant claims that Respondent intentionally attempted to disrupt Complainant’s business by registering and using the <johnsonscreens.org> domain name by selling competing products at the disputed domain name’s resolving website. Panels have held that the sale of competitive products through a disputed domain name is disruptive to the complainant’s business. 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).”). Therefore, the Panel finds that Respondent registered and is using the <johnsonscreens.org> domain name in bad faith as it is disruptive under Policy ¶ 4(b) (iii).

 

Secondly, Complainant contends that Respondent intentionally attempted to attract, for commercial gain, Internet users to the website to which the <johnsonscreens.org> domain name resolves. Complainant claims that Respondent is able to attract these users by creating a likelihood of confusion as to the source of the disputed domain name. The <johnsonscreens.org> domain name resolves to a website where Respondent sells competing products in the well screens industry. As such, the Panel finds that Respondent meant to take commercial advantage of Internet users’ mistakes as to the source of the <johnsonscreens.org> domain name. As the Panel so finds, it also finds that the <johnsonscreens.org> domain name was registered and is used by Respondent in bad faith pursuant to Policy ¶ 4(b) (iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

Thirdly, Complainant argues that Respondent registered and began using the <johnsonscreens.org> domain name with constructive and/or actual knowledge of Complainant’s rights in the JOHNSONSCREENS mark. Complainant argues that its registration of the JOHNSONSCREENS mark gave Respondent constructive knowledge and the use of the mark in the disputed domain name and the sale of competing product indicates Respondent’s actual knowledge. While constructive knowledge generally has not been found to justify a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the JOHNSONSCREENS mark and thus registered and is using the <johnsonscreens.org> domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).  

Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the JOHNSONSCREENS and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

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 <johnsonscreens.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  July 21 2012

 

 

 

 

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