Superior Battery Manufacturing Company, Inc. v. Jin Zheng / Superior Battery Inc
Claim Number: FA1408001573719
Complainant is Superior Battery Manufacturing Company, Inc. (“Complainant”), represented by Trevor T. Graves of KING & SCHICKLI, PLLC, Kentucky, USA. Respondent is Jin Zheng / Superior Battery Inc (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <superiorbatteryinc.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 August 6, 2014; the National Arbitration Forum received payment on August 6, 2014.
On August 6, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <superiorbatteryinc.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 August 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@superiorbatteryinc.com. Also on August 7, 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 September 3, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the SUPERIOR mark to identify its commercial, automotive, and marine batteries. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,632,195 registered Jan. 22, 1991). The <superiorbatteryinc.com> domain name merely adds a business descriptor, the descriptive term “battery,” and a generic top-level domain ("gTLD") to the mark and as such is confusingly similar to the SUPERIOR mark.
Respondent has no rights or legitimate interests. First, Respondent has never been commonly known by the disputed domain name. Second, Respondent uses the domain name to promote and sell the same types of goods sold under the SUPERIOR mark.
Respondent registered and used the domain name in bad faith. First, Respondent sought payment of up to $50,000 to secure transfer of this domain name. Second, Respondent is using the <superiorbatteryinc.com> domain name to profit through confusion because the SUPERIOR mark has a long-standing usage and association with battery-related products.
Complainant sued Respondent in a United States District Court proceeding and obtained a default judgment in Complainant’s favor.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Superior Battery Manufacturing Company, Inc., uses the SUPERIOR mark to identify its commercial, automotive, and marine batteries. The mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,632,195 registered Jan. 22, 1991).
Respondent, Jin Zheng / Superior Battery Inc, registered the <superiorbatteryinc.com> domain name on May 1, 2012. Respondent used the domain name to promote and sell the same types of goods sold under the SUPERIOR mark.
Complainant filed an action in the United District Court for the Western District of Kentucky seeking injunctive relief. In an Order filed May 30, 2014, the Court enjoined Respondent from making unauthorized use of the SUPERIOR mark as a trade name, domain name, or otherwise.
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 has rights in the SUPERIOR mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (The complainant’s registration of its mark with the USPTO sufficiently establishes rights pursuant to Policy ¶ 4(a)(i)).
Respondent’s <superiorbatteryinc.com> domain name is confusingly similar to the SUPERIOR mark Policy ¶ 4(a)(i). The domain name adds a business descriptor, the descriptive term “battery,” and a gTLD to the mark and as such. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of 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).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information identifies “Jin Zheng / Superior Battery Inc.” as the registrant of record. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent used the domain name to promote and sell the same types of goods sold under the SUPERIOR mark. Respondent has been enjoined by a federal court from making unauthorized use of Complainant’s mark. Respondent’s use of the <superiorbatteryinc.com> domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Because of the injunction, Respondent has no rights or legitimate interests in the disputed domain name
Complainant claims that Respondent sought payment of up to $50,000 to secure transfer of this domain name. In an email dated April 15, 2014, designated as “Confidential - For Settlement Purposes Only,” Respondent’s attorney noted that Respondent’s costs in giving up the domain name would be $50,000 and requested that Complainant share in that expense. The Panel finds this confidential settlement communication to be inadmissible. See Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001) (finding that offers to sell a domain name made during settlement discussions are inadmissible).
Complainant alleges that Respondent is using the <superiorbatteryinc.com> domain name to profit through confusion because the SUPERIOR mark has a long-standing usage and association with battery-related products. Respondent used the domain name to operate a competing battery-related sales website. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See 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).
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 <superiorbatteryinc.com> domain name be TRANSFERRED from Respondent.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 17, 2014
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