Emerson Electric Co. v. Stephen Zhao c/o Emerson Industries
Claim Number: FA1306001507205
Complainant is Emerson Electric Co. (“Complainant”), represented by Douglas C. Hamilton of Emerson Electric Co., Missouri, USA. Respondent is Stephen Zhao c/o Emerson Industries (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonindustries.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 27, 2013; the National Arbitration Forum received payment on June 27, 2013.
On June 28, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <emersonindustries.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 29, 2013 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@emersonindustries.com. Also on July 9, 2013, the 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 August 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent is not known by the domain name based on the WHOIS information. Respondent picked the business name “Emerson Industries Int’l”; there is no consistency in the business’s narrative as described on the website; there has never been a business by that name operating at the listed address;
ii. Respondent is using the disputed domain name to direct users to third party competitor websites and is profiting from the fame of Complainant’s mark. Respondent exploits the EMERSON mark in the domain name to shuttle Internet users to three of Complainant’s biggest competitors.
i. Respondent has caused the website reachable by the disputed domain name, <emersonindustries.com>, to display links to competitors.
ii. Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s products.
iii. Respondent, at the time of registration, knew or at least should have known of the existence of Complainant’s trademarks.
For 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 asserts that it is a diversified global manufacturing and technology company. Complainant alleges that it offers a wide range of products and services in the industrial, commercial, and consumer markets through its Process Management, Industrial Automation, Network Power, Climate Technologies, and Commercial & Residential Solutions businesses. Complainant contends that it is the owner of trademark registrations with the USPTO for the EMERSON mark (e.g., Reg. No. 1,316,533, registered January 29, 1985). The Panel notes that Respondent appears to reside in the United States. Therefore, the Panel holds that Complainant’s registration of the EMERSON mark with the USPTO sufficiently proves its rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant contends that Respondent’s domain name, <emersonindustries.com>, is confusingly similar to Complainant’s EMERSON mark. Complainant argues that the addition of the descriptive term “industries” to Complainant’s EMERSON mark does not negate confusing similarity between <emersonindustries.com> and Complainant’s EMERSON mark. The Panel agrees that Respondent’s addition of a descriptive term does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). Complainant claims that the addition of the generic top-level domain (“gTLD”) “.com” to Respondent’s <emersonindustries.com> domain name does not create a level of distinctiveness that overcomes a finding of confusing similarity. The Panel determines that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The Panel concludes that Respondent’s <emersonindustries.com> domain name is confusingly similar to Complainant’s EMERSON mark pursuant to 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 argues that Respondent is not known by the domain name, based upon the fact that no business by Respondent’s name has ever operated at Respondent’s address, inconsistencies in Respondent’s “business history,” and the fact that Respondent’s only “clients” shown on its website are three of Complainant’s major competitors in the marketplace. The Panel notes that the WHOIS information for the disputed domain name identifies “Stephen Zhao c/o Emerson Industries” as the registrant. No other evidence in the record indicates that Respondent is commonly known by the domain name, and Complainant provides compelling reasons to decline to make such a finding. Therefore, the Panel determines that Respondent is not commonly known by the <emersonindustries.com> domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant claims that Respondent is using the disputed domain name to direct users to third party competitor websites and is profiting from the fame of Complainant’s mark. The Panel notes that Respondent’s disputed domain name resolves to a website with the title “Emerson Industries Int’l.” Complainant alleges that the website contains very little information. Complainant asserts that Respondent’s website did not actively sell anything or even list any products. Complainant contends that the products link on the website does not even work. Complainant claims that Respondent’s company name “Emerson Industries Int’l” was created for no other reason than to be confusingly similar to Complainant’s name. The Panel notes that the record evidences the fact that the domain name resolves to a website that purports to offer private equity services to companies at one point, but later operates as an operator selling valves and controls. Therefore, the Panel finds that Respondent is attempting to use the <emersonindustries.com> domain name to operate an unrelated business on Complainant’s mark, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant has proven this element.
Complainant claims that Respondent has caused the website reachable by the disputed domain name, <emersonindustries.com>, to display links to competitors. Complainant asserts that Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant, where Respondent presumably obtains commercial benefits. The Panel notes that Respondent’s disputed domain name features competing links titled “Multi-crystals Silicon Production,” “Coal Gasification,” “Coal Liquefaction,” and others. The Panel determines that Respondent’s display of competing links on its website evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See 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 asserts that Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s products. The Panel observes that Respondent’s <emersonindustries.com> domain name resolves to a website with the title “Emerson Industries Int’l.” Complainant alleges that the impression given by Respondent’s website would cause consumers to believe that Respondent is associated with Complainant. In Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000), the panel found that respondent violated Policy ¶ 4(b)(iv) because respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website where respondent profited from hyperlinks to businesses of the complainant’s rivals in the global market. Thus, the Panel concludes that Respondent is using the disputed domain name to attract Internet users to its own website, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant contends that Respondent, at the time of registration, knew or at least should have known of the existence of Complainant’s trademarks. Complainant alleges that the EMERSON brands are known internationally. Complainant asserts that a “Google” search for the term EMERSON INDUSTRIES shows links to a number of Complainant’s websites. Complainant also notes that Respondent most likely did not independently devise its “business” but instead sought to take prime advantage of the likelihood Internet users would associate his business with Complainant and the EMERSON mark. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <emersonindustries.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: August 6, 2013
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