Norgren, Inc. v. majiandong / majiandong
Claim Number: FA1408001574097
Complainant is Norgren, Inc. (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is majiandong / majiandong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norgrenprc.com>, registered with Xin Net Technology Corporation.
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 8, 2014; the National Arbitration Forum received payment on August 8, 2014. The Complaint was submitted in both English and Chinese.
On August 11, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <norgrenprc.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 4, 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@norgrenprc.com. Also on August 15, 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 September 10, 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
Policy ¶ 4(a)(i)
Complainant uses the NORGREN mark in connection with motion and fluid control technologies. Complainant has used the mark in commerce since March 1, 1926, and has become a global provider. Complainant owns rights in the NORGREN mark through registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No 950,639 registered January 16, 1973). The <norgrenprc.com> domain name is confusingly similar to the NORGREN mark as Respondent has merely included “PRC,” an abbreviation for People’s Republic of China, to the NORGREN mark along with the incidental affixation of a generic top-level domain.
Policy ¶ 4(a)(ii)
Respondent lacks rights in the <norgrenprc.com> domain name. Respondent has never been commonly known by the disputed domain name, as the only evidence available through the WHOIS record identifies “majiandong” as registrant. As for use, the disputed domain name resolves to a website featuring products similar to those sold by Complainant and its competitors. Such use does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Policy ¶ 4(a)(iii)
The <norgrenprc.com> domain name was registered and is being used in bad faith. Respondent’s use of the disputed domain name is designed to and succeeds to disrupt Complainant’s business as the name resolves to a website featuring products similar to those sold by Complainant and its competitors. Respondent uses the disputed domain name in an effort to mislead users as to Complainant’s affiliation with the resolving page. Through such deception, Respondent derives financial benefit via referral fees related to the links and advertisements promoted on the resolving page.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. 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, concludes that the remainder of the proceedings may be conducted in English.
Complainant, Norgren, Inc., uses the NORGREN mark in connection with motion and fluid control technologies. Complainant has used the mark in commerce since March 1, 1926, and has become a global provider. Complainant has rights in the NORGREN mark under Policy ¶ 4(a)(i) through registration with several trademark agencies including the USPTO. Respondent, majiandong / majiandong, registered the <norgrenprc.com> domain name on September 28, 2012. The disputed domain name resolves to a website featuring products similar to those sold by Complainant and its competitors.
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 NORGREN mark under Policy ¶ 4(a)(i) through registration with several trademark agencies including the USPTO. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <norgrenprc.com> domain name is confusingly similar to the NORGREN mark under Policy ¶ 4(a)(i). Respondent has merely included “PRC,” an abbreviation for People’s Republic of China, to the NORGREN mark along with the incidental affixation of a generic top-level domain “gTLD” “.com.” The additions of a geographic identifier and a gTLD are insufficient to negate confusing similarity. See, e.g., Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark).
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 lacks rights in the <norgrenprc.com> domain name. Respondent has never been commonly known by the disputed domain name. The WHOIS record shows “majiandong” as registrant. 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 disputed domain name resolves to a website featuring products similar to those sold by Complainant and its competitors. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a 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).”).
Respondent’s <norgrenprc.com> domain name was registered and is being used in bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name disrupts Complainant’s business as the name resolves to a website featuring products similar to those sold by Complainant and its competitors. Respondent presumably receives fees from the featured links and advertisements. In Caterpillar Inc. v. Bobby Miles d/b/a Western Cowboy Art, FA 1331174 (Nat. Arb. Forum July 23, 2010), the panel found evidence of bad faith disruption saying, “The Panel finds that Respondent’s sale of skid steer loaders casts Respondent as a competitor of Complainant and his use of Complainant’s mark to compete with Complainant through personal sales and the advertisement of pay-per-click links is disruptive to Complainant’s business.”
Respondent’s efforts to offer comparable products to those offered by Complainant is also evidence of Policy ¶ 4(b)(iv) bad faith registration and use. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
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 <norgrenprc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 24, 2014
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