NSK LTD. v. ICS INC.
Claim Number: FA1502001607160
Complainant is NSK LTD (“Complainant”), represented by Jeffrey P. Thennisch of Ingrassia Fisher & Lorenz, Michigan, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nskbearing.com>, registered with TUCOWS, INC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2015; the Forum received payment on February 27, 2015.
On February 27, 2015, TUCOWS, INC. confirmed by email to the Forum that the <nskbearing.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nskbearing.com. Also on February 27, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 is a Japanese corporation and global manufacturer and seller of bearing and related products for industrial, manufacturing, and automotive use. Complainant has over 30,000 employees and annual revenues exceeding U.S. $7 billion. Complainant has used the NSK mark in connection with these products for nearly a century. Complainant claims that the mark is protected in the United States and numerous other countries. Complainant owns various U.S. trademark registrations for the NSK mark, the earliest of which issued in 1968.
The disputed domain name <nskbearing.com> was registered in 2005. Complainant contends that the disputed domain name is identical or confusingly similar to its NSK mark. Complainant further contends that Respondent has no rights or legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith. In support thereof, Complainant states that Respondent is not a distributor of NSK products; Complainant has not authorized Respondent to use its NSK mark in any form; and Respondent is not commonly known by the domain name. Complainant accuses Respondent of attempting to sell the domain name by listing it for sale through Afternic at a starting price of $999, and of using the domain name to divert Internet users seeking Complainant to a click-through website operated by Respondent which promotes competing products. Complainant alleges that Respondent is in the business of hijacking domain names, citing a panel decision under the Policy, BookIt.com, Inc. v. PrivacyProtect.org / ICS INC., D2013-0775 (WIPO June 16, 2013), which noted that 64 prior panels have ruled against Respondent and that Respondent has “made a habit” of registering domain names that are similar to trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used 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.”).
The disputed domain name is comprised of Complainant’s registered NSK mark, with the generic term “bearing” and the top-level domain “.com” appended thereto. These additions do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., WIKA Alexander Wiegand SE & Co. KG, v. CV. Media Kreasi Utama, D2011-2147 (WIPO Jan. 19, 2012) (finding <wikabearing.com> confusingly similar to WIKA); Roller Bearing Co. of America v. Direct Privacy ID 272BB, FA 1414667 (NAF Dec. 22, 2011) (finding <heimbearings.com> confusingly similar to HEIM). The Panel therefore considers the disputed domain name to be confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and its sole apparent use has been to display pay-per-click links, primarily to what appear to be directly competing products. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered “in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct.” Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.” Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”
In this case the Panel finds evidence to support the presence of all four of the circumstances listed in paragraph 4(b) of the Policy. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nskbearing.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 28, 2015
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