iRobot Corporation v. jia qiong
Claim Number: FA1403001547525
Complainant is iRobot Corporation (“Complainant”), represented by Michael A. Lisi of Honigman, Miller, Schwartz and Cohn, LLC, Massachusetts, USA. Respondent is jia qiong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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 March 7, 2014; the National Arbitration Forum received payment on March 7, 2014. The Complaint was submitted in both Chinese and English.
On March 11, 2014, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names are registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the names. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development 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 March 18, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 7, 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@irobotroombajp.com, postmaster@roombasale.com, postmaster@roomba-live.com, postmaster@roombajapan.com. Also on March 18, 2014, 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 April 11, 2014, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
LANGUAGE OF THE PROCEEDINGS
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
i. Complainant, iRobot Corporation, is the world’s most well-known producer of home robots and home robot accessories.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the IROBOT mark (e.g., Reg. No. 2,831,865, registered April 13, 2004) and for the ROOMBA mark (e.g., Reg. No. 2,742,056, registered July 29, 2003).
iii. The <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names are confusingly similar to Complainant’s world famous IROBOT and ROOMBA marks.
i. Respondent has no rights or legitimate interests in the disputed domain names.
ii. Respondent has never been commonly known by the disputed domain names.
iii. Respondent is intentionally deceiving visitors to the counterfeit websites and trading on the goodwill and reputation associated with the IROBOT and ROOMBA marks for illicit financial gain.
i. Respondent registered and is using the disputed domain names in bad faith.
ii. Respondent is intentionally deceiving visitors to the counterfeit websites and trading on the goodwill and reputation associated with the IROBOT and ROOMBA marks for illicit financial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, iRobot Corporation, is a well-known producer of home robots and home robot accessories. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the IROBOT mark (e.g., Reg. No. 2,831,865, registered April 13, 2004) and for the ROOMBA mark (e.g., Reg. No. 2,742,056, registered July 29, 2003).
Respondent, jia qiong, registered <irobotroombajp.com> on November 15, 2013; <roombasale.com>, on December 10, 2013; <roomba-live.com>, on October 10, 2013; and, <roombajapan.com>, on October 10, 2013. Respondent’s websites offer to sell iRobot’s products using iRobots’s trademarks and photos. Respondent accepts orders and payments from customers and does not ship the ordered goods.
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’s registration of the IROBOT and ROOMBA marks with the USPTO sufficiently shows rights in the marks pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (concluding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names are confusingly similar to Complainant’s IROBOT and ROOMBA marks under Policy ¶ 4(a)(i). Respondent’s <irobotroombajp.com> domain name combines Complainant’s ROOMBA mark with its IROBOT mark. Respondent adds the generic or geographic terms “jp,” “sale,” “live,” or “japan” to its disputed domain names. Respondent adds a hyphen to Complainant’s ROOMBA mark in its <roomba-live.com> domain name. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s IROBOT and ROOMBA marks in its disputed domain names.
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).
Respondent is not commonly known by the <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names. under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).The WHOIS record for the disputed domain names lists “jia qiong” as the registrant.
Respondent is intentionally deceiving visitors to counterfeit websites and trading on the goodwill and reputation associated with the IROBOT and ROOMBA marks for illicit financial gain. Respondent’s disputed domain names lead to pages that sell counterfeit vacuums and other related products. See Complainant’s Exhibit G. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007), the panel concluded that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. Accordingly, Respondent is not using the <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent’s conduct also constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
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 <irobotroombajp.com>, <roombasale.com>, <roomba-live.com>, and <roombajapan.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 25, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page