Emerson Electric Co. v. Vasiliy Krisin / JSC Transit Telecom
Claim Number: FA1402001544870
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Vasiliy Krisin / JSC Transit Telecom (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonnetworkpower.info>, registered with GKG.NET, INC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2014; the National Arbitration Forum received payment on February 21, 2014.
On February 22, 2014, GKG.NET, INC. confirmed by e-mail to the National Arbitration Forum that the <emersonnetworkpower.info> domain name is registered with GKG.NET, INC. and that Respondent is the current registrant of the name. GKG.NET, INC. has verified that Respondent is bound by the GKG.NET, INC. 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 February 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2014 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@emersonnetworkpower.info. Also on February 26, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Emerson Electric Co., is a diversified global manufacturing and technology company. Complainant offers a wide range of products and services in the industrial, commercial, and consumer markets through its Process Management, Industrial Automation, Network Power, Climate Technologies, and Commercial & Residential Solutions businesses.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EMERSON NETWORK POWER mark (e.g., Reg. No. 2,798,182, registered December 23, 2003). Complainant has also registered the EMERSON NETWORK POWER mark with the Russian Federation (Reg. No. 360,092, registered September 19, 2008).
iii. Respondent’s <emersonnetworkpower.info> domain name is identical to Complainant’s mark.
i. Respondent has no rights or legitimate interests in respect of the disputed domain name.
ii. Respondent has not been commonly known by the disputed domain name.
iii. Respondent has failed to make an active use of the disputed domain name.
i. The disputed domain name should be considered as having been registered and being used in bad faith.
ii. Respondent’s disputed domain name does not resolve to an active website.
iii. Respondent, at the time of registration of the disputed domain name, knew or at least should have known of the existence of Complainant’s trademark.
1. Respondent’s <emersonnetworkpower.info> domain name is confusingly similar to Complainant’s EMERSON NETWORK POWER mark.
2. Respondent does not have any rights or legitimate interests in the <emersonnetworkpower.info> domain name.
3. Respondent registered or used the <emersonnetworkpower.info> domain name 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 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 it is a diversified global manufacturing and technology company. Complainant asserts that it offers a wide range of products and services in the industrial, commercial, and consumer markets through its Process Management, Industrial Automation, Network Power, Climate Technologies, and Commercial & Residential Solutions businesses. Complainant alleges that it is the owner of trademark registrations with the USPTO for the EMERSON NETWORK POWER mark (e.g., Reg. No. 2,798,182, registered December 23, 2003). See Complainant’s Exhibit A. Complainant alleges that it has also registered the EMERSON NETWORK POWER mark with the Russian Federation (Reg. No. 360,092, registered September 19, 2008). Id. The Panel therefore finds that Complainant’s registration of the EMERSON NETWORK POWER mark with the USPTO and ROSPATENT shows that it owns rights in the mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant asserts that Respondent’s <emersonnetworkpower.info> domain name is identical to Complainant’s EMERSON NETWORK POWER mark. The Panel observes that Respondent removes the spaces in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.info.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Accordingly, the Panel finds that Respondent’s <emersonnetworkpower.info> domain name is identical to Complainant’s EMERSON NETWORK POWER mark under Policy ¶ 4(a)(i).
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); 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 contends that Respondent has not been commonly known by the <emersonnetworkpower.info> domain name. The Panel notes that “Vasiliy Krisin / JSC Transit Telecom” is listed as the registrant of the disputed domain name. See Complainant’s Exhibit B. Prior panels have held that where “the WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s… mark,” the Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA1036202 (NAF Aug. 30, 2007). Therefore, the Panel finds that the record does not show that Respondent is known by the <emersonnetworkpower.info> domain name, therefore showing that Respondent is not commonly known under the <emersonnetworkpower.info> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant states that Respondent has failed to make an active use of the <emersonnetworkpower.info> domain name. The Panel finds that Respondent’s disputed domain name leads to a webpage stating “Nothing interesting here.” See Complainant’s Exhibit C. Therefore, the Panel holds that Respondent has failed to make an active use of the disputed domain name, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent’s <emersonnetworkpower.info> domain name does not resolve to an active website. The Panel observes that Respondent’s disputed domain name leads to a webpage that states “Nothing interesting here.” See Complainant’s Exhibit C. Panels typically do not find disruption where a respondent is not making an active use of the disputed domain name.
Complainant further argues that even though Respondent’s <emersonnetworkpower.info> domain name does not resolve to an active website, the non-use of the domain name in itself evidences bad faith. The Panel notes that Respondent is failing to make an active use of the website by using the disputed domain name to resolve to a page that says “Nothing interesting here.” See Complainant’s Exhibit C. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel concluded that respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy. Thus, the Panel determines that Respondent’s failure to make an active use of the <emersonnetworkpower.info> domain name shows bad faith use and registration under Policy ¶ 4(a)(iii).
Complainant contends that Respondent, at the time of registration of the <emersonnetworkpower.info> domain name knew, or at least should have known of the existence of Complainant’s trademark. Complainant argues that its EMERSON NETWORK POWER brand is known internationally, and that it has marketed and sold services using the EMERSON mark since 1890 and under the EMERSON NETWORK POWER mark since 2000. Complainant also asserts that if Respondent had performed a simple “Google” search for the term EMERSON NETWORK POWER, it would find links to a number of Complainant’s websites. See Complainant’s Exhibit G. Consequently, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights in the mark and hold that Respondent registered the <emersonnetworkpower.info> domain name 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonnetworkpower.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 4, 2014
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