Accuride Corporation v. liu kvein / Beijing Golden Wing World Trade Co.,Ltd
Claim Number: FA1307001509336
Complainant is Accuride Corporation (“Complainant”), represented by Luke DeMarte of Michael Best & Friedrich LLP, Illinois, USA. Respondent is liu kvein / Beijing Golden Wing World Trade Co.,Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accuridewheels.net>, registered with Hichina Zhicheng Technology Ltd..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2013; the National Arbitration Forum received payment on July 11, 2013. The Complaint was received in both Chinese and English.
On July 18, 2013, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <accuridewheels.net> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 July 25, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 14, 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@accuridewheels.net. Also on July 25, 2013, 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 August 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <accuridewheels.net> domain name is confusingly similar to Complainant’s ACCURIDE mark.
2. Respondent does not have any rights or legitimate interests in the <accuridewheels.net> domain name.
3. Respondent registered and uses the <accuridewheels.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures wheels for vehicles such as trucks, trailers, buses, and military vehicles. Complainant owns trademark registrations for its ACCURIDE mark with the China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No 1,108,097 registered September 21, 1997), and for its ACCU-RIDE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 698,057 registered May 24, 1960) and (Reg. No. 912540 registered June 8, 1971).
Respondent registered the <accuridewheels.net> domain name on October 27, 2011, and fails to make any active use of the domain name.
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.”).
The Panel finds that Complainant has rights in its ACCURIDE and ACCUR-RIDE marks under Policy ¶ 4(a)(i) through its registrations with SAIC and with the USPTO, respectively. Previous panels have found that evidence of a registration with a recognized authority is sufficient to establish rights in a given mark. 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).”) Previous panels have found that it is irrelevant whether a mark is registered in the country where respondent resides, only that it can establish rights with a reliable authority. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <accuridewheels.net> domain name is confusingly similar to Complainant’s ACCURIDE mark under Policy ¶ 4(a)(i), as it incorporates Complainant’s entire ACCURIDE mark and merely adds the generic term “wheels” and the the gTLD “.net” to the disputed domain name. These changes do not distinguish the domain name form Complainant’s mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Thus, the Panel finds that Respondent’s <accuridewheels.net> domain name is confusingly similar to Complainant’s ACCURIDE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 commonly known by the disputed domain name and that Complainant has never authorized Respondent to use its marks in any way. The WHOIS information indicates that Respondent’s business is known as “Beijing Golden Wing World Trade Co. Ltd.” and that the registrant of the <accuridewheels.net> domain name is listed in the WHOIS record as “liu kvein.” Previous panels have found that a respondent has no rights or legitimate interests in a disputed domain name where there is no evidence submitted that the respondent is commonly known by a disputed domain name and where there is no indication that the respondent was authorized to use the mark in the domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the <accuridewheels.net> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has no rights or legitimate interests in the <accuridewheels.net> disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name because Respondent makes no use of the disputed domain name. Previous panels have found that failure to make an active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel thus finds that Respondent’s failure to make an active use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has also registered the <accuridewheels.cn> and <accuridewheels.com.cn> domain names. Complainant asserts that the e-mail address listed in the WHOIS record for the two additional domain names is the same as the e-mail associated with the WHOIS record for the <accuridewheels.net> domain name. The Panel notes that this can contribute to a finding of bad faith; however, since the additional domain names have not been disputed and decided upon by a panel, the argument is not sufficient evidence of a pattern of bad faith.
Complainant further contends that Respondent registered and is using the <accuridewheels.net> domain name in bad faith because it resolves to an inactive website. The Panel notes the screenshot provided by Complainant displays the term “Server not found.” Previous panels have found that non-use of a disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Thus, the Panel finds that Respondent’s inactive use of the disputed domain name indicates bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that its long-standing trademark registrations for the ACCURIDE and ACCU-RIDE marks, along with Respondent’s addition of the generic term “wheels,” indicate that Respondent had knowledge of Complainant’s business. The Panel agrees and finds that Respondent had actual knowledge of the mark and Complainant's rights, further evidence of bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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)."
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <accuridewheels.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 1, 2013
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