Emerson Electric Co. v. Li Taiquan and Yang Guoyu / YANG guoyu and xuxiaohong / xu xiaohong and su zhaojun / zhaojun su and jin fen gwei
Claim Number: FA1308001514459
Complainant is Emerson Electric Co. (“Complainant”), represented by Douglas C. Hamilton of Emerson Electric Co., Missouri, USA. Respondent is Li Taiquan (“Respondent”), China.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <emersonchina.com>, registered with 35 TECHNOLOGY CO.; <emersonwork.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.; <emerson-power.com>, registered with HANGZHOU AIMING NETWORK Co., LTD; <emersonups.net>, registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD; and <bj-emerson.com>, registered with XIN NET TECHNOLOGY CORPORATION.
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.
Darryl C. Wilson, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2013; the National Arbitration Forum received payment on August 26, 2013. The Complaint was submitted in both Chinese and English.
On August 14, 2013, JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD confirmed by e-mail to the National Arbitration Forum that the <emersonups.net> domain name is registered with the JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD and that Respondent is the current registrant of the name. JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD has verified that Respondent is bound by the JIANGSU BANGNING SCIENCE & 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 August 14, 2013, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <emersonwork.com> domain name is registered with the 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 August 15, 2013, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <bj-emerson.com> domain name is registered with the 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 October 8, 2013, HANGZHOU AIMING NETWORK CO. confirmed by e-mail to the National Arbitration Forum that the <emerson-power.com> domain name is registered with the HANGZHOU AIMING NETWORK CO. and that Respondent is the current registrant of the name. HANGZHOU AIMING NETWORK CO. has verified that Respondent is bound by the HANGZHOU AIMING NETWORK CO. 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”).
After numerous requests 35 TECHNOLOGY CO. has not confirmed to the National Arbitration that the <emersonchina.com> domain name is registered with 35 TECHNOLOGY CO. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On September 13, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 3, 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@emersonchina.com, postmaster@emersonwork.com, postmaster@emerson-power.com, postmaster@emersonups.net, postmaster@bj-emerson.com. Also on September 13, 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 October 14, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that after collecting extensive documentation of each of the disputed domain names, and examining the evidence thoroughly, it has determined that Respondent registered each of the domain names using five different registrant names with five different registrars. Complainant claims that the evidence conclusively demonstrates that all the domain names are controlled by a single entity using different aliases. Complainant bases its suspicions on Respondent’s seemingly odd selection of registrars, choosing smaller, more obscure registrars over those that have gained size and popularity over the years. Complainant further contends that the anonymous e-mail addresses ending in server names such as “@aa.com” and “@139.com,” paired with apparently nonsensical names, demonstrate a certain pattern of conduct within the registration contact information. Complainant cautions the Panel from relying solely on the WHOIS information to make its determination, which Complainant claims is fictitious and does not adequately tie the various entities together for the purpose of demonstrating Respondent’s use of aliases. Complainant argues that because all the disputed domain names directly target the EMERSON brand, and resolve to an active website reflecting EMERSON and “UPS” in the code, and because the “cookie cutter” designs bear a visually similar appearance, the individual registrations are each attributable to a single Respondent.
The Panel finds that Complainant has NOT sufficiently presented evidence demonstrating that the listed entities are jointly controlled. The Panel, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), determines that there is insufficient support to find that any of the domain names are commonly owned and elects to proceed against the registrant of the first in time registered disputed domain name listed, specifically <bj-emerson.com>, because a UDRP decision can proceed against only one Respondent. The Panel dismisses the Complaint in relation to the other domain names listed by Complainant.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.
A. Complainant
Complainant claims to own rights in the EMERSON mark via trademark registrations in the United States, China, and elsewhere. Complainant submits evidence of its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931 registered August 15, 1916); and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 245,243 registered February 28, 1986). See Complainant’s Exhibit A. Complainant’s trademarks are relevant to manufacturing electric motors, electric fans, generators, switchboards, hair dryers, furnace blowers, agricultural watering machines, power drives, machinery cams, cranes, crushers, generators, chisels, pipe cutters, and a number of other tools, machinery, appliances, and power equipment. Complainant was established in 1890, and became the first company in the United States to sell electric fans. It rapidly expanded its product line to include electric sewing machines, electric dental drills, and power tools, and grew to its current position today as a diversified global manufacturing and technology company. Complainant is widely recognized for its engineering capabilities and management. Complainant registered the <emerson.com> domain name on July 29, 1995.
Respondent registered the disputed domain name on the following date:
<bj-emerson.com>: March 10, 2011
The disputed domain name is confusingly similar to Complainant’s EMERSON mark, as the dominant portion of the domain name reproduces the mark in its entirety, and includes a generic term. Respondent uses the domain name to host a website using the EMERSON mark and logo and offering the same goods that Complainant provides, in an attempt to pass itself off as Complainant, which fails to meet the standard for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent cannot claim to be commonly known by the disputed domain name, based on the registrant name contained in the WHOIS information. Respondent’s registration and use are in bad faith because Respondent’s offered products that compete with those offered and sold by Complainant. Respondent seeks to confuse unsuspecting Internet users looking for Complainant’s website, and attempts to associate itself with Complainant, thereby reaping a commercial gain and disrupting Complainant’s business. Respondent was aware of Complainant’s trademarks when it registered the offending domain names, further indicating bad faith.
B. Respondent
Respondent failed to submit a response in this proceeding.
Complainant, Emerson Electric Co. of St. Louis, MO, USA, owns domestic and international registrations, including in China, for the mark EMERSON which it has used continuously since at least as early as 1916 in conjunction with a wide range of products and services in the industrial, commercial and consumer markets. Complainant states that it was established in 1890 as a company manufacturing motors and has continued to exist and expand since that time to become a global manufacturing and technology company.
Respondent/registrant is Jin Fen Gwei of Beijing, China. Respondent’s registrar’s address is also listed as Beijing, China. Respondent registered the domain name on or about March 10, 2011.
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 claims that its rights in the EMERSON mark are ascertained by its USPTO registrations (e.g., Reg. No. 111,931 registered August 15, 1916). Complainant further provides evidence of its trademark registrations with the SAIC (e.g., Reg. No. 245,243 registered February 28, 1986). Previous panels have agreed that a complainant’s evidence of trademark registrations with various global trademark authorities demonstrate the complainant’s rights in the mark in satisfaction of the Policy. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel here finds that Complainant sufficiently shows that its rights in the EMERSON mark exist as a result of its USPTO registration, for the purposes of Policy ¶ 4(a)(i). The Panel also finds that Complainant’s SAIC registration of the mark (e.g., Reg. No. 245,243 registered February 28, 1986) entitles Complainant rights in the EMERSON mark under Policy ¶ 4(a)(i). See 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)).
Complainant contends that the <bj-emerson.com> domain name is confusingly similar to the EMERSON mark. Complainant alleges that the <bj-emerson.com> domain name includes the designation “bj” which Complainant argues is an abbreviation for “Beijing.” The Panel notes that adding a descriptive term or a geographic term to a mark does not create a domain name distinct from the mark for the purposes of Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).
Complainant also contends that the disputed domain name includes the generic top-level domain (“gTLD”) “.com”. The Panel notes that a gTLD does not change a domain name’s confusing similarity to a complainant’s mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel recognizes that the
<bj-emerson.com> domain name includes a hyphen but finds that adding a hyphen does not relieve confusing similarity between the mark and the disputed domain name. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)). The Panel finds that the <bj-emerson.com> domain name is confusingly similar to Complainant’s EMERSON mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that Respondent fails to demonstrate rights or legitimate interests in the <bj-emerson.com> domain name, claiming that Respondent is not commonly known by the disputed domain name. Complainant points out that the WHOIS information indicates that Respondent is known by a different name. The Panel notes that the WHOIS information for the disputed domain name identifies jin fen gwei” as registrant, which bears no resemblance to the <bj-emerson.com> domain name. The Panel finds that Respondent is not known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that the term EMERSON is not a natural term typically used to describe power supplies, and Respondent’s use of the term is a direct attempt to capitalize on the fame associated with Complainant’s brand. Complainant states that Respondent uses the disputed domain name to offer the same goods that Complainant provides, and submits its Exhibit C, showing a screenshot of the website corresponding with the disputed domain name. The Panel notes that the website appears to display machinery that could arguably be interpreted to compete with Complainant’s products. The Panel agrees that Respondent’s use of the disputed domain name to offer competing products to those offered by Complainant, is unacceptable as a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant further accuses Respondent of attempting to pass itself off as Complainant’s business by prominently displaying the EMERSON mark as well as Complainant’s distinct logo at the resolving website. The Panel notes that the first page of Complainant’s Exhibit C and Complainant’s Exhibit D, picture a screen shot of Complainant’s own home page at its website. The Panel finds that Respondent attempts to pass itself off as Complainant in order to offer Internet consumers competing commercial goods, thereby demonstrating that it does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <bj-emerson.com> domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent causes commercial disruption to Complainant’s business by operating a website in connection with the disputed domain name that offers Internet users products that compete with Complainant’s goods. The panel in DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), stated that the respondent appropriated the complainant’s mark to divert consumers to the respondent’s competing business, and concluded that such use was evidence of bad faith registration and use. The Panel here finds that Respondent disrupts Complainant’s business by attempting to make sales of substantially similar products at the resolving websites, and thereby registered and uses the <bj-emerson.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent attempts to confuse consumers by registering domain names that use Complainant’s EMERSON mark in order to deliberately attract traffic to its website, where it sells competing goods. Previous panels have determined that striving to make commercial revenue by confusing Internet users and diverting traffic to the resolving websites amounts to bad faith registration and use under the Policy. 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). The Panel finds that Respondent’s conduct here reflects similar bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant also asserts that Respondent takes pains to reproduce Complainant’s website at the disputed domain name, and points out the similarities between its own website and those of the disputed domain name, as shown in Exhibits C and D. The Panel notes that Complainant’s logo and mark are duplicated at the resolving website, and concludes that Respondent attempts to pass itself off as Complainant’s business, demonstrating bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bj-emerson.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 28, 2013
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