national arbitration forum

 

DECISION

 

Norgren, Inc. v. fuzhou faladi jidianshebei youxiangongsi / wen guihe

Claim Number: FA1208001458702

 

PARTIES

Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA.  Respondent is fuzhou faladi jidianshebei youxiangongsi / wen guihe (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <norgren-fld.com>, registered with Xin Net Technology Corporation.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2012; the National Arbitration Forum received payment on August 17, 2012.  The Complaint was submitted in both Chinese and English.

 

On August 20, 2012, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <norgren-fld.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 August 21, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 10, 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@norgren-fld.com.  Also on August 21, 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 September 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following assertions:

1.     Respondent’s <norgren-fld.com> domain name is confusingly similar to Complainant’s NORGREN mark.

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

3.    Respondent registered or used the <norgren-fld.com> domain name in bad faith.

           

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

 

FINDINGS

  1. Complainant owns rights in the NORGREN mark based on its long term, continuous use of the mark and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 950,639 registered January 16, 1973) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 292,354 registered October 15, 1986).
  2. Respondent’s <norgren-fld.com> domain name is confusingly similar to Complainant’s NORGREN mark because Respondent only adds the generic letters “f,” “l,” and “d” and the generic top-level domain (“gTLD”) “.com” to Complainant’s NORGREN mark.
  3. Respondent is not commonly known by the <norgren-fld.com> domain name.
  4. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <norgren-fld.com> domain name.
  5. Respondent registered and uses the <norgren-fld.com> domain name in bad faith.
  6. Respondent had actual knowledge of Complainant’s NORGREN mark when it registered the disputed domain name.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant asserts that it owns rights in the NORGREN mark.  Complainant provides tables containing its trademark registration information for registrations of the NORGREN mark with the USPTO (e.g., Reg. No. 950,639 registered January 16, 1973) and SAIC (e.g., Reg. No. 292,354 registered October 15, 1986).  See Complainant’s Annexes B-C.  While Complainant fails to provide copies of the trademark certificates, the Panel determines that Complainant sufficiently demonstrated that it owns trademark registrations with the USPTO and SAIC.  The Panel holds that these trademark registrations establish Complainant’s rights in the NORGREN mark for the purpose 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).”).

 

Complainant avers that Respondent’s <norgren-fld.com> domain name is confusingly similar to Complainant’s NORGREN mark.  Complainant contends that Respondent only adds the generic letters “f,” “l,” and “d” and the gTLD “.com” to Complainant’s NORGREN mark.  The Panel notes that the disputed domain name also contains a hyphen.  The Panel finds that the additions of three letters, a hyphen, and the gTLD “.com” fail to adequately distinguish the disputed domain name from Complainant’s mark, and the Panel concludes that Respondent’s <norgren-fld.com> domain name is confusingly similar to Complainant’s NORGREN mark under Policy ¶ 4(a)(i).  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).

 

Rights or Legitimate Interests

 

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.”).

 

According to Complainant, Respondent is not commonly known by the <norgren-fld.com> domain name.  Complainant alleges that Respondent has no intellectual property or trademarks in the domain name and that Respondent is not a licensee of Complainant.  Complainant contends that the WHOIS information, which lists “fuzhou faladi jidianshebei youxiangongsi / wen guihe” as the registrant of the disputed domain name, further indicates that Respondent is not commonly known by the domain name.  As Respondent did not respond to this case, the Panel finds that Respondent is not commonly known by the <norgren-fld.com> 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 is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <norgren-fld.com> domain name.  Complainant claims that Respondent uses the disputed domain name to resolve to a website selling Complainant’s products and providing hyperlinks to the websites of Complainant’s competitors.  See Complainant’s Annex F.  Complainant argues that, even if Respondent was an authorized dealer of Complainant’s products, the inclusion of the competing hyperlinks and the failure to disclose Respondent’s relationship with Complainant on the resolving website prevents Respondent’s website from being legitimate.  The Panel notes that Respondent’s website is in Chinese, but the Panel believes Complainant’s claims, and holds that Respondent’s selling of Complainant’s products and provision of competing hyperlinks are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent registered and uses the <norgren-fld.com> domain name in bad faith because Respondent is disrupting Complainant’s business.  Complainant claims that Respondent causes this disruption by selling Complainant’s products and providing hyperlinks to Complainant’s competitors.  See Complainant’s Annex F.  Again, while the Panel finds that the resolving website is in Chinese, the Panel accepts Complainant’s claims regarding Respondent’s use of the disputed domain name.  Therefore, Panel agrees with Complainant and concludes that Respondent registered and uses the <norgren-fld.com> domain name in bad faith according to Policy ¶ 4(b)(iii).  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 Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant claims that Respondent also registered and uses the <norgren-fld.com> domain name in bad faith because Respondent is attempting to commercially benefit, from referral fees and the sale of Complainant’s products, by creating confusion as to Complainant’s affiliation with the confusingly similar disputed domain name.  Complainant argues that Respondent receives referral fees from the competing hyperlinks found on the resolving website.  Complainant also alleges that Internet users may end up at Respondent’s resolving website due to the confusing nature of the disputed domain name.  The Panel believes Complainant’s arguments relating to Respondent’s use of the <norgren-fld.com> domain name and finds that Respondent is attempting to commercially benefit from Internet user confusion, and the Panel finds that Respondent registered and uses the <norgren-fld.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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Finally, Complainant contends that Respondent registered the <norgren-fld.com> domain name in bad faith because Respondent had knowledge of Complainant’s NORGREN mark when Respondent registered the domain name.  Complainant bases this contention on Complainant’s allegations relating to the content of the resolving website.  The Panel believes Complainant’s allegations and determines that Respondent likely had actual knowledge of Complainant’s NORGREN mark, and the Panel concludes that Respondent registered the <norgren-fld.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See 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).

 

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 <norgren-fld.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  September 28, 2012

 

 

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