national arbitration forum

 

DECISION

 

Keihin Corporation v. Youli Ltd.

Claim Number: FA0711001106190

 

PARTIES

Complainant is Keihin Corporation (“Complainant”), represented by Sarah L. Bruno, of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC 20036.  Respondent is Youli Ltd (“Respondent”), 16-17lingxia Fuding Fujian, Fuding Fujian 355200, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <china-keihin.com>, registered with Xin Net Technology Corporation.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2007.

 

On November 7, 2007, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <china-keihin.com> domain name is registered with 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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@china-keihin.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 11, 2007, 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <china-keihin.com> domain name is confusingly similar to Complainant’s KEIHIN mark.

 

2.      Respondent does not have any rights or legitimate interests in the <china-keihin.com> domain name.

 

3.      Respondent registered and used the <china-keihin.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Keihin Corporation, is one of the world’s leading automotive systems manufacturers.  Complainant commenced business in 1956 in Japan, and since that time has expanded its operations to include China, Thailand, India, Brazil, the United Kingdom, and other parts of Asia and North America.  Complainant widely markets its numerous products under its KEIHIN mark.  Complainant holds trademark registrations in numerous jurisdictions worldwide for its KEIHIN mark, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,830,160 issued April 12, 1994) and with the State Intellectual Property Office of the People’s Republic of China (i.e. Reg. No. 1,722,114 issued February 28, 2002).  Complainant also operates websites at the <keihin.com>, <keihin-corp.com.co.jp> and <keihin-us.com> domain names. 

 

Respondent registered the <china-keihin.com> domain name on May 30, 2002.  Respondent’s disputed domain name resolves to a website that displays goods in direct competition with Complainant, as well as counterfeit versions of Complainant’s automotive goods. 

 

DISCUSSION

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has presented evidence of numerous trademark registrations in several jurisdictions, thus sufficiently establishing its rights in the KEIHIN mark for the purposes of Policy ¶ 4(a)(i).  See FIA Card Servs., Nat’l Ass’n v. Impulse Mktg. Group, Net OPS, FA 944261 (Nat. Arb. Forum June 18, 2007) (holding that the complainant’s trademark registrations for the PLATINUM PLUS and WORLD CLASS PLATINUM PLUS marks, which it held with the USPTO, demonstrated its rights in the marks pursuant to Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

The Panel finds that the <china-keihin.com> domain name is confusingly similar to Complainant’s KEIHIN mark under Policy ¶ 4(a)(i).  The disputed domain name contains Complainant’s mark in its entirety, with the addition of the geographically descriptive term “China,” which relates to a location in which Complainant does business.  The addition of this term, as well as a hyphen and a generic top-level domain, do not adequately distinguish the disputed domain name from Complainant’s mark under the requirements of Policy ¶ 4(a)(i).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous 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).”); see also Franklin Mint Fed. Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23, 2007) (“When assessing the similarities between the domain name and the trademark, the domain name suffix “.com” should be disregarded.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Complainant has presented an adequate prima facie case that Respondent lacks rights and legitimate interests in the <china-keihin.com> domain name.  Thus, under Policy ¶ 4(a)(ii), the burden shifts to Respondent to present evidence of rights and legitimate interests in the disputed domain name.  Despite Respondent’s failure to respond to the Complaint, the Panel chooses to examine the evidence under the parameters of Policy ¶ 4(c) before reaching a conclusion as to Respondent’s rights and legitimate interests in the <china-keihin.com> domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent’s WHOIS information lists Respondent as “Youli Ltd.”  This information, as well as a lack of evidence indicating that Respondent is commonly known by the <china-keihin.com> domain name or authorized to use Complainant’s mark, indicates that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also 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).  

 

The evidence shows that Respondent is using the <china-keihin.com> domain name to sell goods in direct competition with Complainant, as well as counterfeit versions of Complainant’s own goods. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), the panel found that the respondent’s use of a domain name to divert Internet users to a website selling goods and services similar to the services the complainant offered 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).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).  Thus, the Panel finds that Respondent is not making either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).       

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the <china-keihin.com> domain name to direct Internet users to a website displaying goods in direct competition with Complainant’s constitutes a disruption of Complainant’s business and qualifies as evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).  

 

The Panel finds that Respondent is attempting to profit from a likelihood of confusion as to Complainant’s association with the <china-keihin.com> domain name and the products displayed on the website that resolves from the disputed domain name.  Such use is presumably for Respondent’s own commercial benefit, as the disputed domain name offers products for sale.  Accordingly, the Panel finds bad faith registration and use 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); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Finally, both the disputed domain name, as well as the content displayed on the website which resolves from the <china-keihin.com> domain name, indicate that Respondent had actual knowledge of Complainant’s mark when registering the disputed domain name.  Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).  See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“[I]t can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug.”).  

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <china-keihin.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  December 18, 2007

 

 

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