Rosemount, Inc. and Emerson Electric Co. v. 北京中威万博信息科技有限公司 JonWeb Technology Trade CO., LTD. c/o 郑玉常 Zheng Yu Chang
Claim Number: FA1307001510569
Complainant is Rosemount, Inc. and Emerson Electric Co. (“Complainant”), Minnesota, USA. Respondent is 北京中威万博信息科技有限公司 JonWeb Technology Trade CO., LTD. c/o 郑玉常 Zheng Yu Chang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rosemount-transmitter.com>, registered with WEB COMMERCE COMMUNICATIONS LIMITED DBA WEBNIC.CC.
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 19, 2013; the National Arbitration Forum received payment on July 19, 2013.
On July 21, 2013, WEB COMMERCE COMMUNICATIONS LIMITED DBA WEBNIC.CC confirmed by e-mail to the National Arbitration Forum that the <rosemount-transmitter.com> domain name is registered with WEB COMMERCE COMMUNICATIONS LIMITED DBA WEBNIC.CC and that Respondent is the current registrant of the name. WEB COMMERCE COMMUNICATIONS LIMITED DBA WEBNIC.CC has verified that Respondent is bound by the WEB COMMERCE COMMUNICATIONS LIMITED DBA WEBNIC.CC 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 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@rosemount-transmitter.com. Also on July 24, 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 15, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <rosemount-transmitter.com> domain name is confusingly similar to Complainant’s ROSEMOUNT mark.
2. Respondent does not have any rights or legitimate interests in the <rosemount-transmitter.com> domain name.
3. Respondent registered and uses the <rosemount-transmitter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Rosemount, Inc. and Emerson Electric Co. Complainant contends that Rosemount, Inc. is a wholly-owned subsidiary of Emerson Electric Co. Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that there is a sufficient nexus between the Complainants and elects to treat them as a single entity in this proceeding, collectively referring to Complainants as “Complainant.”
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ROSEMOUNT mark (e.g., Reg. No. 903,838, registered December 8, 1970). Complainant is also the owner of trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) for the ROSEMOUNT mark (e.g., Reg. No. 5,590,915, registered August 14, 2009). Complainant uses the mark to manufacture and sell sensors that measure pressure, temperature, level, and flow in many applications.
Respondent registered the <rosemount-transmitter.com> domain name on August 3, 2010, and uses it to copy Complainant’s logos and advertising information, and to sell Complainant’s products and the products of competitors Yokogawa, Siemens, Honeywell, ABB, and Khrone through links on Respondent’s website.
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’s registration of the ROSEMOUNT mark with China’s SAIC and the USPTO sufficiently establishes its rights in the mark pursuant to 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).”).
Respondent’s <rosemount-transmitter.com> domain name is confusingly similar to Complainant’s ROSEMOUNT mark because it merely adds the descriptive term “transmitter” and a hyphen to Complainant’s ROSEMOUNT mark. These changes do not differentiate the disputed domain name from Complainant’s mark 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); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that Respondent’s <rosemount-transmitter.com> domain name is confusingly similar to Complainant’s ROSEMOUNT 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 asserts that Respondent has not been commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “北京中威万博信息科技有限公司 JonWeb Technology Trade CO., LTD. c/o 郑玉常 Zheng Yu Chang” as the registrant. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record. Thus, the Panel finds that Respondent is not commonly known by the <rosemount-transmitter.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent sells Complainant’s products and the products of competitors Yokogawa, Siemens, Honeywell, ABB, and Khrone through links on Respondent’s website. Complainant argues that the products sold by Respondent and Complainant’s competitors directly compete with Complainant’s own products. Prior panels have found that a respondent’s use of a domain name to sell competing products is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Consequently, the Panel finds that Respondent is not using the <rosemount-transmitter.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent displays Complainant’s ROSEMOUNT and EMERSON PROCESS MANAGEMENT logos along with a history of Complainant, taken from Complainant’s own advertising literature. Additionally, Complainant asserts that Respondent includes unauthorized copies of Complainant’s product literature available for download and copies of Complainant’s Beijing’s ISO9001 and ISO14001 certification certificates. Complainant argues that Respondent’s use of Complainant’s logo, history, and product literature constitutes an attempt to pass itself off as Complainant. The Panel agrees and finds that Respondent’s use of the <rosemount-transmitter.com> domain name constitutes passing off, which is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in a pattern of cybersquatting by acquiring domain names in bad faith. citing two domain names registered by Respondent, <cisco-switch.com> and <my-cisco-router.com>, which correspond to well-known third-party trademarks. The Panel finds that the registration of multiple domain names outside of this or any other UDRP case does not constitute cybersquatting under Policy ¶ 4(b)(ii), as the registration of outside domain names is not related to the present case.
Complainant argues that Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for Complainant’s products. The Panel notes that Respondent is using the <rosemount-transmitter.com> domain name to sell competing products. In Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004), the panel found that “Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” The Panel similarly finds that Respondent is disrupting Complainant’s business, demonstrating bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant asserts that by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, Respondent is using the fame of Complainant’s mark to improperly increase traffic to the website listed at the disputed domain name for its own commercial gain. The Panel agrees and finds that Respondent has registered and is using the <rosemount-transmitter.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant argues that its ROSEMOUNT brand is known internationally and that it has marketed and sold services under the ROSEMOUNT mark since 1967. Complainant also demonstrates that Respondent has a thorough knowledge of Complainant’s brand and business, since it has directly copied Complainant’s logos and advertising material. Therefore, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights, additional evidence of 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).
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 <rosemount-transmitter.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 24, 2013
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