Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Claim Number: FA1504001612750
Complainant is Xylem Inc. and Xylem IP Holdings LLC (“Complainant”), represented by Rex A. Donnelly of RatnerPrestia, Delaware, USA. Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) (“Respondent”), Beijing, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xylemchina.com>, registered with HiChina Zhicheng Technology Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 2, 2015; the Forum received payment on April 2, 2015. The Complaint was received in both Chinese and English.
On April 2, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <xylemchina.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 April 6, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 27, 2015 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@xylemchina.com. Also on April 6, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant uses the XYLEM mark in connection with a wide range of products and services in the United States and throughout the world, which include pumps and fluid technology. Complainant has registered the XYLEM mark with the likes of China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,102,283; registered July 12, 2012), establishing rights in the mark. Respondent’s <xylemchina.com> domain name is confusingly similar to the XYLEM mark as it merely adds the geographic descriptor “china” and the generic top-level domain “.com” to the fully incorporated XYLEM mark.
(ii) Respondent has no rights or legitimate interests in the <xylemchina.com> domain name. Respondent is neither commonly known by the <xylemchina.com> domain name, nor has it been authorized by Complainant to register any domain name which incorporates the XYLEM mark. Further, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, Respondent is using the resolving site to attract Internet users and consumers to a website which appears to be connected with Complainant, advertising and selling products identical to Complainant’s products.
(iii) Respondent has registered and used the <xylemchina.com> domain name in bad faith. First, Respondent has attempted to attract, for commercial gain, Internet users to its site to profit from the goodwill associated with the XYLEM mark per Policy ¶ 4(b)(iv). Next, Respondent’s passing-off behavior evinces bad faith under Policy ¶ 4(a)(iii). Finally, Respondent had actual and/or constructive knowledge of the XYLEM mark when registering the <xylemchina.com> domain name, demonstrating bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response to the complaint. The <xylemchina.com> domain name was registered on June 4, 2014.
(1) Multiple Complainants
In the instant proceedings, there are two Complainants: Xylem IP Holdings LLC and Xylem Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant states that Xylem IP Holdings LLC is listed as the owner of the XYLEM mark and licenses the mark to its parent company Xylem Inc. Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity. In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant” below.
(2) Language of the Proceedings
The Panel notes that 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 shall be conducted in English.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 uses the XYLEM mark in connection with a wide range of products and services in the United States and throughout the world, which include pumps and fluid technology. Complainant claims it has registered the XYLEM mark with the likes of China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 1,102,283; registered July 12, 2012), arguing such registrations establish rights in the mark. The Panel agrees with the finding in Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010), in which the panel held “that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i).” Further, panels have seen a complainant’s registration of a mark with a governmental authority as sufficient to establish rights per Policy ¶ 4(a)(i), even where complainant and respondent operate in different countries. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel agrees that Complainant has demonstrated rights in the XYLEM mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <xylemchina.com> domain name is confusingly similar to the XYLEM mark as it merely adds the geographic descriptor “china” and the generic top-level domain “.com” to the fully incorporated XYLEM mark. Panels have seen such alterations to a mark as insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, this Panel agrees that Respondent’s <xylemchina.com> domain name is confusingly similar to the XYLEM 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 urges that Respondent has no rights or legitimate interests in the <xylemchina.com> domain name. Complainant asserts that Respondent is neither commonly known by the <xylemchina.com> domain name, nor has it been authorized by Complainant to register any domain name which incorporates the XYLEM mark. In light of the available WHOIS information and Respondent’s failure to provide any additional evidence to the record for the Panel’s consideration, the Panel finds no basis to conclude Respondent as commonly known by the <xylemchina.com> domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, Complainant alleges Respondent is using the resolving site to attract Internet users and consumers to a website which appears to be connected with Complainant, advertising and selling products identical to Complainant’s products. See Compl., at Attached Annex H-2. The Panel agrees with the finding in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); where the panel found “Respondent’s demonstrated intent to divert Internet users seeking complainant’s website to a website of respondent and for respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”; and finds Respondent’s behavior in the present case evinces neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant also contends that Respondent is attempting to impersonate Complainant with its <xylemchina.com> website. Compare Compl., at Attached Annexes H-2 and H-3; with Compl., at Attached Annex J. The Panel views the available evidence as demonstrating Respondent’s attempts to pass itself off as Complainant and thus finds Respondent has no rights or legitimate interests in the <xylemchina.com> domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Complainant contends that Respondent uses the disputed domain name to resolve to a website offering products and services that are identical to Complainant’s. See Compl., at Attached Ex. H-2, H-3. Prior panels have concluded that using a confusingly similar domain name to resolve to a website offering identical products or services as a complainant, indicates an intent to disrupt a complainant’s business by competing in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel thus concludes that Respondent’s use of the <xylemchina.com> domain name indicates bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent has attempted to attract, for commercial gain, Internet users to its site to profit from the goodwill associated with the XYLEM mark per Policy ¶ 4(b)(iv). The Panel notes that Complainant has attached the resolving pages to Respondent’s <xylemchina.com> domain name at Annexes H-2 and H-3. The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Next, Complainant argues that the majority of the content provided on Respondent’s <xylemchina.com> website relates to pumps and other fluid technology products that are identical or similar to Complainant’s products. See Compl., at Attached Annex H-3. The Panel agrees with Complainant and concludes that Respondent’s passing-off behavior evinces bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Complainant asserts that, due to its trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the XYLEM mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements for pumps and fluid technology as well as the incorporation of numerous photographs connected with Complainant, which depict the same types of products offered by Complainant, indicate that Respondent had actual knowledge of Complainant and its rights. The Panel infers due to the Respondent’s manner of use of the disputed domain that Respondent had actual knowledge of Complainant and its rights, and thus finds that Respondent registered the <xylemchina.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xylemchina.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 13, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page