Dow Corning Corporation v. zhongshan daokangning youjigui co.ltd
Claim Number: FA1309001519356
Complainant is Dow Corning Corporation (“Complainant”), represented by Gina M. McCreadie of Nixon Peabody LLP, Massachusetts, USA. Respondent is zhongshan daokangning youjigui co.ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <daokanning.com>, registered with FOSHAN YIDONG NETWORK CO. LTD.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2013; the National Arbitration Forum received payment on September 12, 2013. The Complaint was received in both Chinese and English.
On September 13, 2013, FOSHAN YIDONG NETWORK CO. LTD confirmed by e-mail to the National Arbitration Forum that the <daokanning.com> domain name is registered with FOSHAN YIDONG NETWORK CO. LTD and that Respondent is the current registrant of the name. FOSHAN YIDONG NETWORK CO. LTD has verified that Respondent is bound by the FOSHAN YIDONG NETWORK 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 September 19, 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 9, 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@daokanning.com. Also on September 19, 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
[i.] In accordance with ICANN Rule 3(b)(viii), this Complaint is based on Complainant’s longstanding and continuous use and registration of the DOW CORNING mark (in English and Chinese characters) and logo. Established in 1943, Dow Corning is a global leader in silicones and silicon-based technology and innovation, offering thousands of products and services under the DOW CORNING® mark and DOW CORNING logo.
For more than seven decades, Dow Corning has been using the DOW CORNING mark and logo in connection with its extensive line of silicone materials in the United States and globally. Although Dow Corning is headquartered in Midland, Michigan, it has locations throughout the world, including without limitation nine entities in China located in Beijing, Cheng Du, GuangZhou, Hong Kong, Shanghai, Shenzhen, Songjiang, and Zhangiagang.
[ii.] Dow Corning is the owner of numerous trademark registrations for DOW CORNING both in the United States and China, and other countries throughout the world. Dow Corning is the owner of the following U.S. and Chinese trademark registrations for the DOW CORNING mark (in English and Chinese characters) and logo:
[complainant provides a table of 42 marks, registered in the Unites States and China, including the following examples:]
U.S. Registration No. 570,268 DOW CORNING 2/10/1953
Chinese Registration No. 161620 DOW CORNING 8/30/1982
Chinese Registration No. 1476085 <image redacted> DOW CORNING in Chinese characters 11/21/2000
All of the cited registrations are valid, unrevoked, and in full force and effect. Each U.S. registration is also incontestable.
[iii.] Complainant also actively operates a website at www.dowcorning.com, which prominently and pervasively displays the DOW CORNING mark and logo.
[iv.] Over the years, Dow Corning has invested considerable resources developing the DOW CORNING brand, product line, and marketing so as to maximize the value and reputation of Dow Corning and its brand in the marketplace. Through substantial, continuous, and ongoing use and promotion of its mark and logo on or in connection with its goods and services for more than seven decades, Dow Corning has developed substantial goodwill in its DOW CORNING mark and logo, both in the United States and globally, and has a strong reputation with and has become well-known to consumers as offering high-quality silicone and silicon-based products and services.
FACTUAL AND LEGAL GROUNDS
[a.] This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[i.] In accordance with UDRP Rule 3(b)(ix)(1) and UDRP Policy ¶4(a)(i), the domain name daokanning.com is confusingly similar to Complainant’s mark because “daokanning” is a confusingly similar Pinyin phonetic transliteration of Complainant’s registered 道康宁 mark for DOW CORNING in Chinese characters. It is well-established that “domain names comprising phonetic transliterations of Chinese language trademarks are confusingly similar to such trademarks under the Policy.” La Roche-Posay Laboratoire Pharmaceutique v. Domain Whois Protection Service/sdfdsdf, Case No. D2012-1606 (WIPO Oct. 8, 2012) (internal citations omitted). As one panel explained:
[Where a] trademark [displayed in Chinese characters] is represented unequivocally as “ren tou ma” in the Pinyin, romanization of Mandarin Chinese (the official language in China), which is widely implemented and used in word processing systems with Chinese text input capability[,] . . . [a]lthough the trademark [in Chinese characters] is visually different from the Disputed Domain Name, it cannot be denied that the Disputed Domain Name is phonetically identical to [the trademark in Chinese characters]. As “ren tou may” is a highly foreseeable means of representing and rendering textual input of the trademark [in Chinese characters], the Panel accepts that the Disputed Domain Name is confusingly similar to the trademark [in Chinese characters].
E. Remy Martin & Co v. xiangwu meng, Case No. D2012-0069 (WIPO Mar. 27, 2012); see McDonald's Corporation v. Fundacion Private Whois, Case No. D2012-1435 (WIPO Sept. 20, 2012) (finding that a disputed domain name comprised of a Pinyin phonetic transliteration of Roman script confusingly similar to the complainant’s trademark); McDonald's Corporation v. Private Whois mailesong.org, Case No. D2012-0481 (WIPO Apr. 26, 2012) (finding same). Here, the transliteration of DOW CORNING in Chinese characters is 道康宁. The Pinyin translation of 道康宁 is “dao-kang-ning.” Respondent’s domain name merely omits the “g” in the Pinyin translation and is confusingly similar – and virtually identical to – the Pinyin phonetic translation for DOW CORNING.
[ii]. In addition, where a respondent intentionally misspells a word or omits a letter, seeking to capitalize on typographical errors made by Internet users, such conduct constitutes typosquatting. See Zone Labs, Inc. v. Zuccarini, Claim No. FA 190613 (Nat. Arb. Forum Oct. 15, 2013) (“Respondent’s registration and use of [a domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting”). In a typosquatting situation, the intentional misspelling does not negate or otherwise dispel the confusing similarity between the domain name and the complainant’s mark. See, e.g., Alaska Air Group, Inc. v. Private Whois Service, Claim No. FA 1303001488941 (Nat. Arb. Forum Apr. 10, 2013) (in a case involving ALASKA AIR, finding that domain names akaskaair.com and alskaair.com constitute “typosquatting and do not negate the confusing similarity with the trademark that is clearly present”); Victoria’s Secret v. Zuccarini, Claim No. FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark, but rather renders the domain name confusingly similar to the complainant’s mark). There can be no reasonable dispute that daokanning.com (which merely omits the “g” from the Pinyin translation of 道康宁) constitutes typosquatting, and does not negate the confusing similarity between Respondent’s domain name and the Pinyin translation of Complainant’s 道康宁 mark.
[ii]. Further, a review of Respondent’s website at www.daokanning.com reveals that Respondent has systematically copied the overall layout, structure, and color scheme of Complainant’s website. Indeed, Respondent has gone so far as to use DOW CORNING’s logo, but replaces DOW CORNING with “daokanning,” as well as Complainant’s trademarked tagline “We help you invent the future.” In addition, the English version of www.daokanning.com prominently advertises on the homepage “Which Dow Corning do you need today?” Below that question is a hyperlink for “Dow Corning in China” containing detailed information about the “Dow Corning Corporation” located in Zhongshan City (which is not a city in which Complainant has a location despite having eight other locations in China), much of which parrots information found on Complainant’s website (www.dowcorning.com). A user clicking through the English pages for www.daokanning.com finds repeated and prominent reference to Complainant. For example, under the tab “Premier Services,” the website states “As you may know, [sic] is a global supplier of silicon materials. But that is only one aspect, we also provide innovative solutions, dedicated to help you to develop business, improve the production capability and market development.” In addition, the tab “Joined investment” contains information regarding Dow Corning’s “commitment by understanding our customers” and “Dow Corning today, relying on strong talent and technological advantages. . . .” Similar statements appear on the Chinese version of the www.daokanning.com translated into English using Google Translate. Based on the foregoing, daokanning.com is confusingly similar to Complainant’s registered 道康宁 mark. See McDonald's Corporation v. Private Whois mailesong.org, Case No. D2012-0481 (WIPO Apr. 26, 2012)
[b.] In accordance with UDRP Rule 3(b)(ix)(2) and UDRP Policy ¶4(a)(ii), Respondent should be considered as having no rights or legitimate interests in the daokanning.com domain name.
[i]. Where there is no evidence that complainant authorized or otherwise permitted the respondent to register the disputed domain name, and complaint’s rights in the mark at issue predate respondent’s registration of the disputed domain name, this constitutes a prima facie case that the respondent has no rights or legitimate interests in that domain name. The burden then shifts to the respondent to provide evidence to rebut this presumption. See McDonald's Corporation v. Private Whois mailesong.org, Case No. D2012-0481 (WIPO Apr. 26, 2012). Here, Respondent is in no way sponsored or endorsed by, or in any other way affiliated or connected with Complainant or any of its respective subsidiaries or affiliates, and Respondent has no authority, license, or permission from Complainant to use the DOW CORNING mark or logo (whether in Chinese or English), on or in connection with Respondent’s domain names, websites, or products or services. As detailed above, Complainant has established that it has held rights in the DOW CORNING mark and logo and 道康宁 long before Respondent registered daokanning.com in January 2012. As a result, there is a presumption that Respondent has no rights or legitimate interests in the daokanning.com domain name.
[ii]. Moreover, the www.daokanning.com website does not appear to be offering any bona fide goods or services, as advertised on the website. When you click on the “Order Online” tab, the user must submit contact information, including address, telephone number, and email address, if they are interested in ordering products. There is no shopping cart or other ability to ensure that any order for “products” will be fulfilled. Regardless, even if a user is able to purchase products, Respondent is not an authorized distributor of DOW CORNING products, and any “Dow Corning” products shipped by Respondent are not subject to Complainant’s quality control process. See Yahoo! Inc. v. Chinayahoo.com, FA 236538 (Nat. Arb. Forum Mar. 23, 2004) (use of a domain name confusingly similar to a mark to offer the same or similar services as those offered under the mark in competition with complainant’s services is not a use in connection with a bona fide offering of goods or services . . . or a non-commercial or fair use . . .”); CAM Online, Inc. vs. Fu, D 2000-1374 (WIPO Dec. 11, 2000) ([I]t would be unconscionable to find a bona fide offering of services in [r]espondent’s operation of website using a domain name which is confusingly similar to the [c]omplainant’s mark and for the same business).
[iii]. There is also no evidence to support that Respondent has been commonly known by the daokanning.com domain name. Respondent did not register the daokanning.com domain name until January 10, 2012, and upon information and belief, has been using the domain name since that time to resolve to a URL depicting a website designed to suggest a connection with Complainant to promote and offer for sale products purportedly offered by, or originating from, Complainant, which is not true. To the contrary, Respondent’s (i) registration of a domain name that is confusingly similar to Complainant’s registered 道康宁 mark, (ii) in connection with a website that incorporates without authorization substantial elements of Complainant’s website and use of Complainant’s DOW CORNING mark (in English and Chinese characters) and logo, (iii) to promote and offer for sale products purportedly offered by Complainant demonstrates that Respondent is merely trying to trade upon the reputation and goodwill of Complainant.
[c.] In accordance with UDRP Rule 3(b)(ix)(3) and UDRP Policy ¶4(a)(iii), the daokanning.com domain name should be considered as having been registered and used in bad faith by the Respondent. Pursuant to paragraph 4(b)(iv) of the Policy, use of a domain name to intentionally seek to attract, for commercial gain, Internet users to the respondent’s website, by creating a likelihood of confusion with the complainant’s trademark as to source, sponsorship, affiliation, or endorsement of respondent’s website, or products or services on such website, constitutes registration and use in bad faith by the respondent. UDRP Policy ¶4(b)(iv); see Snag, Inc. v. Jorge Ruiz, FA1301001483058 (Nat. Arb. Forum May 17, 2013) (finding that respondent’s bad faith was “vividly demonstrated by its considerable replication of the elements of [c]omplainant’s website in order to give the impression of affiliation with [c]omplainant”); SAIC v. Summerfield, FA 807001218154 (Nat. Arb. Forum Sept. 12, 2008) (finding a presumption of bad faith where respondent used his domain name for a website that copied complainant’s website because respondent is misappropriating the goodwill associated with complainant’s business, and specifically complainant’s mark); see also Am. Automobile Assoc., Inc. v. Greenlight Properties a/k/a Scott Paterson, FA 807001213534 (Nat. Arb. Forum Aug. 19, 2008) (“it may be inferred that Respondent had actual knowledge when it used the AAA mark as the dominant feature of the domain names that advertise those same services. Respondent’s registration of the confusingly similar domains with either constructive or actual knowledge is evidence of bad faith”).
As detailed above, Respondent registered a domain name that is confusingly similar – and nearly identical to – the Pinyin translation of Complainant’s registered mark in Chinese characters, 道康宁. Respondent is using this domain name to resolve to a URL for a website that: (i) incorporates the overall layout, structure, and color scheme of Complainant’s website; (ii) uses the DOW CORNING’s logo, but replaces DOW CORNING with “daokanning,” and Complainant’s trademarked tagline “We help you invent the future;” and (iii) makes prominent and repeated reference to Complainant and its products and services, all without authorization from Complainant. Further, Respondent has engaged in typosquatting, which has repeatedly been held to constitute evidence of bad faith registration and use of a domain name. See Zone Labs, Inc. v. Zuccarini, Claim No. FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)”); Alaska Air Group, Inc. v. Private Whois Service, Claim No. FA 1303001488941 (Nat. Arb. Forum Apr. 10, 2013) (stating same). Based on the foregoing, there can be little dispute that Respondent’s actions constitute bad faith use and registration of a domain name.
B. Respondent
Respondent failed to submit a response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order canceling or transferring a domain name:
(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 has an extensive line of high-quality silicone-based products and services known under the DOW CORNING mark. Complainant established its business in 1943, and is now a global leader in silicones and silicone-based technology and innovation. Complainant has locations internationally including China, Beijing, Hong Kong, and Shanghai. Complainant has rights in the DOW CORNING mark and provides evidence of its registrations with the United States Patent & Trademark Office (“USPTO”) and the Chinese State Administration for Industry and Commerce (“SAIC”).
USPTO, e.g.:
Reg. No. 570,268 registered February 10, 1953
Reg. No. 571,013 registered February 24, 1953
Reg. No. 576,946 registered July 7, 1953
SAIC, e.g.:
Reg. No. 161,620 registered August 30, 1982
Reg. No. 161,622 registered August 30, 1982
Reg. No. 6,326,446 registered March 28, 2010
Complainant has been using the DOW CORNING mark in connection with its line of products continuously for seven decades. A complainant may establish rights in a given mark through registering the mark with a governmental trademark authority. 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).”). The Panel finds Complainant has rights in the DOW CORNING mark pursuant to Policy ¶4(a)(i).
Complainant claims the <daokanning.com> domain name is confusingly similar to Complainant’s DOW CORNING mark under Policy ¶4(a)(i). The disputed domain name is a confusingly similar Pinyin Phonetic transliteration of Complainant’s registered mark for DOW CORNING in Chinese characters. The Pinyin translation of Complainant’s Chinese mark is “dao-kang-ning.” Respondent’s <daokanning.com> domain name omits a “g” in the Pinyin translation. Respondent also adds the generic top-level domain (“gTLD”) “.com” and removes the hyphens present in the Pinyin translation of Complainant’s Chinese mark. These variations are not sufficient to differentiate the disputed domain name from Complainant’s mark. See Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Prop., D2005-1085 (WIPO Jan. 2, 2006) (“[A] semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation.”); 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); see also Hotwire, Inc. v. Wilder, FA 741901 (Nat. Arb. Forum Aug. 7, 2006) (finding the <heatwire.com> domain name to be confusingly similar to the complainant’s HOTWIRE.COM mark, as the disputed domain name was pronounced similarly to the complainant’s mark and was also a misspelled variation of it); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Respondent’s <daokanning.com> domain name is therefore confusingly similar to Complainant’s DOW CORNING mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <daokanning.com> domain name because Respondent is not commonly known by the domain under Policy ¶4(c)(ii). Respondent did not register the disputed domain name until January 10, 2012, long after Complainant’s registrations. Complainant has not authorized or given permission to Respondent to use its mark in any way. The WHOIS information for Respondent’s disputed domain name lists “zhongshan daokangning youjigui co.ltd” as registrant. A respondent is not commonly known by a disputed domain name under Policy ¶4(c)(ii) if there is no evidence on the record indicating there is a relationship between respondent and the domain name that would make respondent commonly known by 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). Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the <daokanning.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent has no rights or legitimate interests in the <daokanning.com> 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 under Policy ¶¶4(c)(i) or 4(c)(iii). Respondent uses the disputed domain name to resolve to a website requesting personal contact information, including address, telephone number, and email address (and appears to be phishing, even though Complainant does not use that word). Respondent’s resolving website appears to offer Complainant’s products. The website does not offer any features to indicate or ensure any order for products will be fulfilled. Even if Internet users are able to purchase products form the resolving website, Respondent is not an authorized distributor of DOW CORNING products. The website resolving from the disputed domain name contains the heading “We help you invent the future.” This is the same heading is on Complainant’s legitimate website. Respondent copied Complainant’s logo, and simply replaces the words DOW CORNING with “DAOKANNING.” Respondent uses the same color scheme as Complainant’s official website. Respondent’s disputed domain name’s web site also uses Complainant’s marks and provides incorrect information about Complainant. Using a confusingly similar domain name to resolve to a website attempting to imitate the appearance of a complainant’s official website indicates a respondent’s attempt to pass itself off as the complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. 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); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶4(c)(iii)). Respondent is not using the <daokanning.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) or Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <daokanning.com> domain name in bad faith under Policy ¶4(b)(iv). Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, or products or services on the resolving website. Respondent incorporates the overall layout, structure, and color scheme of Complainant’s website. Respondent uses Complainant’s DOW CORNING logo by replacing Complainant’s mark with the term “daokanning” (a phonetic translation into Chinese). Respondent makes prominent and repeated references to Complainant and its products and services without Complainant’s authorization. Respondent’s website features links including, “Products,” “premier Services,” “Online Order,” “About Us,” and “Hotline 400-033-8700.” It is bad faith use and registration when a respondent uses a confusingly similar domain name to attract Internet users to its website where it imitates a complainant’s official website and allegedly offers complainant’s products for sale. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶4(b)(iv)”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). The Panel concludes Respondent registered and is using the <daokanning.com> domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s use of the <daokanning.com> domain name indicates bad faith through typosquatting behavior. Typosquatting is not a specified ground within the UDRP to find bad faith. While some may find this an adequate shorthand way to describe bad faith shown by a confusingly similar domain name to attract Internet users to its website where it imitates a complainant’s official website for commercial gain, this Panel declines to do so.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <daokanning.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 4, 2013
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