MFG.com Europe SA (MFG.com Europe Ltd.) v. Hu JingKe
Claim Number: FA1311001527822
Complainant is MFG.com Europe SA (MFG.com Europe Ltd.) (“Complainant”), represented by Jon C. Martin of Friend, Hudak & Harris, LLP, Georgia, USA. Respondent is Hu JingKe (“Respondent”), represented by Hanhow Intellectual Property Partners, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parts-sourcing.com>, registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2013; the National Arbitration Forum received payment on November 1, 2013.
On November 1, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <parts-sourcing.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@parts-sourcing.com. Also on November 5, 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.
A timely Response was received and determined to be complete on November 25, 2013.
Complainant submitted a timely Additional Submission on November 29, 2013. Respondent submitted a timely Additional Submission on December 4, 2013.
On December 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant, MFG.com Europe SA (MFG.com Europe Ltd.), is a subsidiary of MFG.com, Inc. (“MFG”). Complainant and its affiliated MFG subsidiaries are in the business of providing an online marketplace that (1) allows buyers of made-to-order industrial goods and textiles/apparel to create a request for quote (“RFQ”) complete with their engineering CAD files and technical specifications, (2) automatically matches such RFQs to manufacturers around the globe that have the right equipment, expertise and capacity at the right moment in time to manufacture to goods specified in the RFQ, (3) allows suppliers to receive and respond to RFQs based on configured capability profiles, and (4) provides a platform to track a buyer/manufacturer relationship from RFQ through collaboration, quoting, due diligence, awarding of the order and delivery of the product.
b. Complainant and its affiliates sell subscription access to this Internet-based marketplace to manufacturers throughout the world interested in receiving RFQs from buyers throughout the world.
c. Complainant and its affiliates conduct business online through the <sourcingparts.com> domain name.
d. Complainant owns a trademark registration with the Swiss Federal Institute of Intellectual Property (“SFIIP”) for the SOURCINGPARTS.COM mark (Reg. No. P-478606 registered November 17, 2000).
e. Respondent’s <parts-sourcing.com> domain name is confusingly similar to Complainant’s SOURCINGPARTS.COM mark.
i. The disputed domain name reverses the primary words comprising the mark and adds a hyphen.
2. Policy ¶ 4(a)(ii)
a. Respondent, Hu JingKe, was not commonly known as Parts-Sourcing at any time prior to Respondent’s registration of the <parts-sourcing.com> domain name.
b. Complainant has not authorized Respondent to use its SOURCINGPARTS.COM mark.
c. Respondent, Hu JingKe, was employed by Complainant’s affiliate MFG China from September 1, 2006 to April 11, 2013, during which time MFG acquired Complainant and its rights in the SOURCINGPARTS.COM mark.
d. Respondent has not used the <parts-sourcing.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. The disputed domain name resolves to a website that purports to provide online buyer/manufacturer marketplace services in direct competition with Complainant’s services. See Complainant’s Annex 4.
ii. Respondent’s website is replete with infringing, false and misleading material chosen to deceive customers into believing that Respondent is a buyer/manufacturer marketplace that has been in existence as long as, and is as successful and reputable as, the buyer/marketplace of Complainant and its affiliates.
1. Respondent’s website infringes upon the trade dress found on Complainant’s website, including the RFQ ticker, RFQ value tracker, and color scheme. See Complainant’s Annex 9. Respondent’s website also includes near verbatim copies of MFG press releases, including a press release regarding the acquisition of Complainant itself (under its former name SourcingParts.com SA). See Complainant’s Annexes 12-28.
2. Respondent’s website also includes pilfered materials from other media outlets in an attempt to deceive customers into believing Respondent operates a legitimate business at the disputed domain name. See Complainant’s Annexes 29-43.
3. Policy ¶ 4(a)(iii)
a. Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, Complainant.
b. Respondent intentionally chose a domain name confusingly similar to Complainant’s mark in an attempt to divert Internet users to Respondent’s own competing website for commercial gain.
c. As a former employee of Complainant’s affiliate company, Respondent was aware of Complainant and its rights in the SOURCINGPARTS.COM mark prior to Respondent’s registration of the disputed domain name.
4. Respondent registered <parts-sourcing.com> on April 24, 2012.
1. Policy ¶ 4(a)(i)
a. “Sourcing parts” or “parts sourcing” is a generic phrase or a merely descriptive phrase commonly used to refer to an industry or business that features services aimed at finding suppliers who will offer products or raw materials. Generic names cannot be owned exclusively by anyone, not even by Complainant who has registered this one as a trademark.
2. Policy ¶ 4(a)(ii)
a. Even the registrant of the registered trademark containing a generic or descriptive term has no right to prohibit others from using the mark or similar marks because such use is always regarded as fair use in defense against a trademark infringement.
b. Respondent has been commonly known by the <parts-sourcing.com> domain name, even if Respondent has not acquired trademark or service mark rights, because Respondent is currently “running” the resolving website “via Shanghai Shuoxin Enterprise Management Consulting Co., Ltd.,” a company that “is working with one of the Top 500 companies named Bosch” and has established two separate companies in the United States and China to “cope with tremendous business growth.”
c. Respondent chose to register this domain name because it is descriptive of a service that can be offered under that domain name.
d. Respondent has rights and legitimate interests in the <parts-sourcing.com> domain name because it developed, registered, and built up the website associated with the domain name on the basis of the availability of a generic term.
e. Respondent’s business model differs from that of Complainant by “company positioning in market, source of the customer development, customer positioning, services scope and the manner in which they are given.” Shanghai Shuoxin Enterprise Management Consulting Co., Ltd., the company using Respondent’s website, has a scope of business which includes “corporation management consultant; technological development, service, consulting, transfer in field of network technology; advertising using self-owned media; electronic business; business consulting; market information counseling and investigation, etc.” These activities are distinct from the services Complainant provides under its mark.
f. Respondent is not subject to a non-competition provision.
g. Respondent does not copy any content related to Complainant, and instead only provides a description of the parts-sourcing industry. Respondent questions the authenticity of the screenshots Complainant provides as evidence, and presents its own screenshots purporting to show that no copying has taken place. See Respondent’s Annex 2.
3. Policy ¶ 4(a)(iii)
a. It does not matter whether Respondent was aware of Complainant’s SOURCINGPARTS.COM mark or was employed by Complainant’s affiliate, because “SOURCINGPARTS” is a generic term which can be registered and used as a domain name by anyone.
C. Complainant’s Additional Submission
Complainant brought this proceeding because Respondent, while employed by
Complainant’s affiliate, and with full knowledge of Complainant’s mark
SOURCINGPARTS.COM, registered the confusingly similar domain name <parts-sourcing.com>. Complainant seeks to prevent Respondent’s unfair competition based on the use of a domain name he knew to be confusingly similar and his bad faith use of such domain name to confuse Complainant’s customers into believing that the business operated at the domain name <parts-sourcing.com> is of the same pedigree and quality as that of Complainant and its affiliates.
Complainant has proved it has rights in the SOURCINGPARTS.COM mark.
Respondent does not have rights or legitimate interests in the domain name. Respondent has not shown that it uses the domain name in connection with a bona fide offering of goods or services. Even if Respondent used the Domains By Proxy services to protect his “personal security” as claimed in the Response, such use is not evidence of a bona fide offering of goods or services. Similarly, the fact that a Court in China decided that Respondent is not subject to a contractual noncompetition provision is not relevant to whether his use of the <parts-sourcing.com> domain name is in connection with a bona fide offering of goods or services.
Respondent provides similar services to Complainant. Respondent became aware of Complainant’s mark during his employment with Complainant’s affiliate and prior to the registration of the <parts-sourcing.com> domain name.
Respondent has only been engaged in the parts sourcing industry since he was engaged by Complainant’s affiliate in late 2006. After this proceeding was commenced, the materials cited by Complainant as evidence of Respondent’s bad faith were either modified or deleted prior to Respondent’s recording of his notarized web page copies. However, content provided in the cached and archived pages is substantially similar to the content provided in the Amended Complaint.
Neither Respondent Hu JingKe nor Shanghai Shuoxin Enterprise Management Consulting Co., Ltd. have been commonly known by the <parts-sourcing.com> domain name. Respondent states that he is “running the website parts-sourcing.com via Shanghai Shuoxin Enterprise Management Consulting Co., Ltd.” However, Shanghai Shuoxin Enterprise Management Consulting Co., Ltd. is not commonly known as <parts-sourcing.com>. Also, the registration for the domain name <parts-sourcing.com> makes no mention of Shanghai Shuoxin Enterprise Management Consulting Co., Ltd.
Whether the company running the resolving website from the <parts-sourcing.com> has a license with a different scope than Complainant’s is irrelevant. The fact remains, as admitted by Respondent that he provides similar services to Complainant on the resolving website.
Respondent registered and is using the domain name in bad faith. Respondent does not dispute that the <parts-sourcing.com> domain is being used for commercial gain. Instead, Respondent states that he chose a generic or descriptive term for a domain name and is merely using that domain name to compete fairly with Complainant. However, Respondent knew of Complainant’s mark long before he registered the disputed domain name.
D. Respondent’s Additional Submission
Complainant is abusing the Policy in bad faith to deprive a registered domain-name holder of a domain name. Complainant’s domain name <sourcingparts.com> resolves to <mfg.com>. In Switzerland, resolving a domain name to a website is not considered as “genuine use” of a registered mark. Consequently, the mark can be cancelled. Therefore, the Complainant does not have the legitimate rights and interests based on the mark.
Such resolving use of the domain name <sourcingparts.com> does not constitute a fair use of a domain name under Policy ¶ 4(c)(iii). Furthermore, there are no goods or services bearing the SOURCINGPARTS.COM mark on the website at both <sourcingparts.com> and <mfg.com>. The registered mark is a generic or descriptive term, and is not in use. Complainant has failed to use its trademark to maintain the validity of the mark.
Respondent has rights and legitimate interests in the domain name. Respondent has been commonly known by the disputed domain name. Respondent as the registrant of the disputed domain name authorized Shanghai Shuoxin Enterprise Management Consulting Co., Ltd (“Company”) to use it free of charge dating back to November 18, 2012. In the process of operation, the Company has contacted and developed a lot of famous purchasing companies in the industry through extensive marketing measures, such as attending exhibitions, attending trade events organized by foreign Chambers of Commerce, and making telemarketing phone calls.
Respondent is making fair use of the domain name with bona fide offering of goods or services without intent to misleadingly divert customers. The Company first developed their customers via face-to-face meetings and one-to-one phone calls. After signing the agreement of cooperation with a specific customer, the Company started to provide their services with the customers on the website at <parts-sourcing.com>. The Company’s business model is different from Complainant’s business model.
The domain name was not registered in bad faith. Respondent was not aware of Complainant's trademark “SOURCINGPARTS.COM” when he registered the domain name, because Respondent did not: 1) have access to the registration of the mark in Swiss; 2) have knowledge of trademark law; 3) have knowledge and skills of conducting a trademark search. Since the trademark is generic, Complainant does not have the exclusive right of use of the trademark. Respondent’s registration of the domain name is fair use of the generic words “parts” and “sourcing.”
Complainant, MFG.com Europe SA (MFG.com Europe Ltd.), is a subsidiary of MFG.com, Inc. (“MFG”). Complainant and its affiliated MFG subsidiaries are in the business of providing an online marketplace that (1) allows buyers of made-to-order industrial goods and textiles/apparel to create a request for quote (“RFQ”) complete with their engineering CAD files and technical specifications, (2) automatically matches such RFQs to manufacturers around the globe that have the right equipment, expertise and capacity at the right moment in time to manufacture to goods specified in the RFQ, (3) allows suppliers to receive and respond to RFQs based on configured capability profiles, and (4) provides a platform to track a buyer/manufacturer relationship from RFQ through collaboration, quoting, due diligence, awarding of the order and delivery of the product. Complainant and its affiliates sell subscription access to this Internet-based marketplace to manufacturers throughout the world interested in receiving RFQs from buyers throughout the world. Complainant owns a trademark registration with the Swiss Federal Institute of Intellectual Property (“SFIIP”) for the SOURCINGPARTS.COM mark (Reg. No. P-478606 registered November 17, 2000).
Respondent, Hu JingKe, was employed by Complainant’s affiliate MFG China from September 1, 2006 to April 11, 2013, during which time MFG acquired Complainant and its rights in the SOURCINGPARTS.COM mark. Respondent registered <parts-sourcing.com> on April 24, 2012. The disputed domain name resolves to a website that provides online buyer/manufacturer marketplace services in direct competition with Complainant’s services. See Complainant’s Annex 4. Respondent’s website uses trade dress found on Complainant’s website, including the RFQ ticker, RFQ value tracker, and color scheme. See Complainant’s Annex 9. Respondent’s website also includes near verbatim copies of MFG press releases. See Complainant’s Annexes 12-28. As a former employee of Complainant’s affiliate company, Respondent was aware of Complainant and its rights in the SOURCINGPARTS.COM mark prior to Respondent’s registration of the disputed domain name.
“Sourcing parts” or “parts sourcing” is a generic or descriptive phrase commonly used to refer to an industry or business that features services aimed at finding suppliers who will offer products or raw materials.
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.
Complainant is a subsidiary of MFG.com, Inc. Complainant and its affiliates sell subscription access to an Internet-based marketplace to manufacturers throughout the world interested in receiving requests for quotes from buyers throughout the world. Complainant has a SFIIP trademark registration for the SOURCINGPARTS.COM mark (Reg. No. P-478606 registered November 17, 2000). The Panel finds that Complainant has rights in the SOURCINGPARTS.COM mark for the purposes of Policy ¶ 4(a)(i) through trademark registration with SFIIP. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant claims that Respondent’s <parts-sourcing.com> domain name is confusingly similar to Complainant’s SOURCINGPARTS.COM mark. The disputed domain name reverses the primary words comprising the mark and adds a hyphen. Neither change is sufficient to defeat Complainant’s claim of confusing similarity. The only differences between the disputed domain and
Complainant’s mark are the reversal of the primary words comprising the mark, “sourcing” and “parts,” and the addition of a hyphen. The reversal of words does not avoid confusing similarity. See Xcentric Ventures, LLC d/b/a www.RipoffReport.com v. Report a Rip Off, Inc., FA 1363406, (Nat. Arb. Forum January 18, 2011) (finding ‹reportaripoff.net› confusingly similar to complainant’s registered RIPOFF REPORT 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 finds that Respondent’s <parts-sourcing.com> domain name is confusingly similar to Complainant’s SOURCINGPARTS.COM mark within the meaning of Policy ¶ 4(a)(i).
Respondent contends that the <parts-sourcing.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark. Respondent also challenges the validity of Complainant’s mark. The SFIIP trademark registration establishes Complainant’s rights in the SOURCINGPARTS.COM mark. Challenges to the validity of a mark are beyond the scope of the Policy ¶ 4(a)(i) analysis as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)); see also Rand Refinery Limited v. Patrick Reinhardt, D2001-0233 (WIPO May 23, 2001)(In dismissing the respondent’s arguments that the term “Krugerrand” refers to a unit of currency and that the complainant had no intellectual property rights in such term, the Panel refused to investigate the validity of the registered mark stating that “[s]uch an investigation is best made by a Court of competent jurisdiction.”). However, the Panel will consider Respondent’s generic terms argument under the Policy ¶¶ 4(a)(ii) and 4(a)(iii) analysis.
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).
Complainant contends that Respondent was not commonly known as “Parts-Sourcing” at any time prior to Respondent’s registration of the <parts-sourcing.com> domain name. Complainant further maintains that it has not authorized Respondent to use its SOURCINGPARTS.COM mark. Complainant asserts that Respondent is in fact “Hu JingKe,” a former employee of Complainant’s affiliate MFG China. Respondent argues that it has been commonly known by the <parts-sourcing.com> domain name, even if Respondent has not acquired trademark or service mark rights, because Respondent is currently “running” the resolving website “via Shanghai Shuoxin Enterprise Management Consulting Co., Ltd.,” a company that “is working with one of the Top 500 companies named Bosch” and has established two separate companies in the United States and China to “cope with tremendous business growth.”
The relevant WHOIS information identifies the registrant of the <parts-sourcing.com> domain name as “Hu JingKe.” The Panel finds that neither Respondent nor Shanghai Shuoxin Enterprise Management Consulting Co., Ltd. is commonly known by the <parts-sourcing.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)(the respondent was not commonly known by the disputed domain name because 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).
Complainant contends that Respondent has not used the <parts-sourcing.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to resolve to a website that purports to provide online buyer/manufacturer marketplace services in direct competition with Complainant’s services. See Complainant’s Annex 4. Complainant argues that Respondent’s website is replete with infringing, false and misleading material chosen to deceive customers into believing that Respondent is a provider of buyer/manufacturer marketplace services that has been in existence as long as, and is as successful and reputable as, Complainant and its affiliates.
Respondent contends that it has rights and legitimate interests in the <parts-sourcing.com> domain name because it developed, registered, and built up the website associated with the domain name on the basis of the availability of a generic term. Respondent also contends that the terms of the <parts-sourcing.com> domain name are common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. Respondent maintains that it chose to register this domain name because it is descriptive of a service that can be offered under that domain name.
The Panel finds that “sourcing parts” or “parts sourcing” are generic terms or merely descriptive terms commonly used to refer to an industry or business that features services aimed at finding suppliers who will offer products or raw materials. Complainant does not have exclusive rights to the “sourcing parts” or “parts sourcing” terms. See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004)(“The Panel finds that Respondent has rights to and legitimate interests in a domain name that consists of a generic or common term.”).
Respondent has developed a competing website associated with the domain name using the generic or common terms. However, Respondent, a former employee of Complainant’s affiliates, has used content, press releases and trade dress from Complainant’s website in an attempt to mislead or confuse consumers. See Kmart of Mich., Inc. v. Michael W. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006)(the respondent’s attempt to pass itself off 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 domain name for a website nearly identical to the complainant’s website); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)(the respondent was not using the contested domain name within the parameters of Policy ¶¶ 4(c)(i) or 4(c)(iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). In the instant case, the Panel finds that Respondent has not used the <parts-sourcing.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 alleges that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iii), because Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. Complainant asserts that Respondent uses the disputed domain name in connection with a website that purports to provide online buyer/manufacturer marketplace services in direct competition with Complainant’s services. See Complainant’s Annex 4. The Panel finds that Respondent’s registration and use of the <parts-sourcing.com> domain name constitute disruption of Complainant’s business in bad faith as contemplated by Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv), because Respondent intentionally chose a domain name confusingly similar to Complainant’s mark in an attempt to divert Internet users to Respondent’s own competing website for commercial gain. Complainant adds that Respondent creates confusion on its website by displaying infringing, false and misleading material chosen to deceive customers into believing that Respondent is a buyer/manufacturer marketplace that has been in existence as long as, and is as successful and reputable as, the buyer/marketplace of Complainant and its affiliates. Respondent’s website uses trade dress found on Complainant’s website, including the RFQ ticker, RFQ value tracker, and color scheme. See Complainant’s Annex 9. Respondent’s website also includes near verbatim copies of MFG press releases. See Complainant’s Annexes 12-28. Respondent’s registration and subsequent use of the disputed domain name were calculated to create confusion amongst consumers and Respondent seeks to generate a commercial gain from such confusion. The Panel finds that Respondent registered and uses the <parts-sourcing.com> domain name in bad faith pursuant Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Nor does the fact that “sourcing parts” or “parts sourcing” is a generic or descriptive phrase prevent a finding of bad faith registration and use of the <parts-sourcing.com> domain name since Respondent, a former employee of Complainant’s affiliate, is using a confusingly similar domain name to misleadingly divert consumers to its website.
Complainant alleges that as a former employee of Complainant’s affiliate, Respondent was aware of Complainant and its rights in the SOURCINGPARTS.COM mark prior to Respondent’s registration of the disputed domain name. Complainant shows that Respondent was employed by Complainant’s affiliate MFG China from September 1, 2006 to April 11, 2013, during which time MFG acquired Complainant and its rights in the SOURCINGPARTS.COM mark. As Respondent registered the <parts-sourcing.com> domain name with actual knowledge of Complainant and its rights in the SOURCINGPARTS.COM mark, the Panel finds that Respondent has registered the domain in 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).
Respondent argues that it did not register the disputed domain name in bad faith under Policy ¶ 4(b)(iii), because the services Respondent provides are distinct from the services Complainant provides under its mark. Respondent further argues that its business model differs from that of Complainant. However, the Panel finds that Respondent’s use of the disputed domain name competes with Complainant’s business within the meaning of the Policy.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parts-sourcing.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 11, 2013
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