Textron Innovations Inc. v. Sheng Liang / Sarawina
Claim Number: FA1506001622906
Complainant is Textron Innovations Inc. (“Complainant”), represented by Jeremiah A. Pastrick of Continental Enterprises, Indiana, USA. Respondent is Sheng Liang / Sarawina (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenleetextron.com>, registered with EPAG Domainservices GmbH.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2015; the Forum received payment on June 5, 2015.
On June 8, 2015, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <greenleetextron.com> domain name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices GmbH 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 June 15, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@greenleetextron.com. Also on June 15, 2015, 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.
On June 24, 2015 and June 26, 2015, the Forum received communication from Respondent which was not a proper Response to the Complaint.
Having received no proper response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant has rights in the TEXTRON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,090,704, registered on May 9, 1978). Complainant also has rights in the GREENLEE mark through its registration with the USPTO (e.g., Reg. No. 1,365,452, registered on October 15, 1985). Respondent’s <greenleetextron.com> domain name is confusingly similar to Complainant’s TEXTRON and GREENLEE marks because it is a combination of the two marks, with the addition of the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Sheng Liang” as Registrant. Respondent has not submitted any evidence to indicate being commonly known by the disputed domain name. Respondent is not authorized to use Complainant’s TEXTRON and GREENLEE marks. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to provided links to competitors of Complainant.
Respondent uses the disputed domain name for the purpose of disrupting Complainant’s business by providing links to competitors of Complainant. Respondent uses the resolving website to capitalize on the confusion of Internet users to profit commercially by providing links to competitors of Complainant. Respondent registered the <greenleetextron.com> domain name with actual knowledge of Complainant’s rights in the TEXTRON and GREENLEE marks.
Respondent
Respondent did not submit a Response in this proceeding. In correspondence with the Forum on June 24, 2015 and June 26, 2015, Respondent appeared to be willing to transfer the <greenleetextron.com> domain name to Complainant.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
On June 24, 2015, the Forum received an e-mail submitted from Respondent, which is identified in this proceeding as “Correspondence – Respondent.” In this document, Respondent states it is willing to surrender the <greenleetextron.com> domain name. However, since there has been no request to withdraw the complaint pursuant to the Forum Supplemental Rule 12 (b), the Panel will issue a decision.
For the reasons set forth below the Panel finds Complainant is entitled to the requested relief of transfer of the <greenleetextron.com> domain name.
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 TEXTRON mark in conjunction with its diversified business model, which includes the use of the GREENLEE mark in conjunction with providing tools for the woodworking and electric industry. Complainant states it has rights in the TEXTRON mark through its registration with the USPTO (e.g., Reg. No. 1,090,704, registered on May 9, 1978). Complainant states it also has rights in the GREENLEE mark through its registration with the USPTO (e.g., Reg. No. 1,365,452, registered on October 15, 1985). Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding 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). Accordingly, the Panel finds that Complainant has rights in the TEXTRON and GREENLEE marks under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <greenleetextron.com> domain name is confusingly similar to Complainant’s TEXTRON and GREENLEE marks because it is a combination of the two marks, with the addition of the gTLD “.com.” Past panels have found that the addition of “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Past panels have also found that a domain name that is made out of two of a complainant’s marks is a confusingly similar domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).Therefore, the Panel finds that Respondent’s <greenleetextron.com> domain name is confusingly similar to Complainant’s TEXTRON and GREENLEE marks pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 alleges that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Sheng Liang” as Registrant of record, and Respondent has not provided any evidence to indicate that it is commonly known by the domain name. Complainant states that Respondent is not authorized to use Complainant’s TEXTRON and GREENLEE marks. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <greenleetextron.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent has failed to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links to competitors of Complainant, from which Respondent presumably receives “pay-per-click” fees. Past panels have found that such use suffices to show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Accordingly, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant has proved this element.
Complainant alleges that Respondent registered and uses the <greenleetextron.com> domain name for the purpose of disrupting Complainant’s business operations because Respondent’s resolving website provides links to competitors of Complainant, from which Respondent presumably receives “pay-per-click” fees. Past panels have found the hosting of competitive links constitutes disruption under Policy ¶ 4(b)(iii), thereby showing bad faith in use and registration. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds such use here, and therefore finds that Respondent registered and uses the <greenleetextron.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <greenleetextron.com> domain name to provide links to competitors of Complainant. Past panels have found hosting of competitive links to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel therefore finds that Respondent registered and uses the <greenleetextron.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TEXTRON and GREENLEE marks. Complainant argues that because of its extensive and lengthy use of the marks, as well as Respondent’s use of the <greenleetextron.com> domain, Respondent must have been fully aware of Complainant’s rights. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the TEXTRON and GREENLEE marks at the time of registration, and Panel finds that Respondent registered the <greenleetextron.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <greenleetextron.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: July 20, 2015
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