ITT Manufacturing Enterprises LLC and ITT Corporation v. hu yuzhu / Guangdong Foshan water pump factory / xu min / nanjing pamuliutishebeiyouxiangongsi
Claim Number: FA1507001631008
Complainant is ITT Manufacturing Enterprises LLC and ITT Corporation (“Complainant”), represented by Rex A. Donnelly of RatnerPrestia, Delaware, USA. Respondent is hu yuzhu / Guangdong Foshan water pump factory / xu min / nanjing pamuliutishebeiyouxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ittnanjing.com> and <nanjingitt.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn; and <njitt.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2015; the Forum received payment on July 28, 2015. The Complaint was received in both Chinese and English.
On Jul 29, 2015, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the Forum that the <ittnanjing.com> and <nanjingitt.com> domain names are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn, and that Respondent is the current registrant of the names. Beijing Innovative Linkage Technology Ltd. dba dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. dba dns.com.cn 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”).
Also on Jul 29, 2015, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <njitt.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 3, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 24, 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@ittnanjing.com, postmaster@nanjingitt.com, and postmaster@njitt.com. Also on August 3, 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 August 28, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1.Complainant has rights in the ITT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) in connection with pumps in International Class 7 (e.g., Reg. No. 1,372,168, registered November 26, 1985). Respondent’s disputed domain names are confusingly similar to the ITT mark in which Complainant has rights. Respondent’s disputed <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names all incorporate Complainant’s ITT mark and the city name “nanjing” or an acronym signifying Nanjing, i.e. “nj.” The presence of geographic indicators and generic top-level domain names (“gTLDs”) do not sufficiently distinguish Respondent’s disputed domain names from Complainant’s ITT mark, which is the prominent feature of the domain.
2. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not affiliated with Complainant and has not been licensed to use Complainant’s marks in any manner. Further, Respondent is not commonly known by the disputed domain names based on WHOIS information indicating that Respondent is listed as, “hu yuzhu” and “xu min.” In addition, Respondent’s use of the disputed domain names to pass itself of as Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3.Respondent registered and is using the disputed domain names in bad faith. Respondent’s bad faith is evident from Respondent competing and disrupting Complainant’s business. Respondent also is intentionally attempting to divert users, for commercial gain, to Respondent’s illegitimate website and creating confusion between Complainant’s marks and Respondent’s disputed domain names. Finally, Respondent registered and used the disputed domain names with actual knowledge of the ITT mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the manufacture and sale of water pumps and related goods and services.
2. Complainant has rights in the ITT mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) in connection with pumps in International Class 7 (e.g., Reg. No. 1,372,168, registered November 26, 1985).
3. The <ittnanjing.com> domain name was registered on August 28, 2013;
the <nanjingitt.com> domain name was registered on May 23, 2013; and
the <njitt.com> domain name was registered on May 12, 2011.
4. Respondent uses the disputed domain names to pass itself of as Complainant, to divert internet users to its illegitimate website , to create confusion between Complainant’s marks and Respondent’s disputed domain names and with actual knowledge of the ITT mark and Complainant’s rights in the mark.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.”
The two Complainants in this matter are ITT Manufacturing Enterprises LLC and ITT Corporation. Complainant submits that ITT Manufacturing Enterprises LLC, is a wholly owned subsidiary of ITT Corporation and therefore jointly owns the rights to trade under the ITT mark. 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 will treat them both as a single entity in this proceeding. Throughout this decision and for reasons of convenience, the Complainants will be collectively referred to as “Complainant.”
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that a single Respondent is responsible for the <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names. More specifically, Complainant contends that “Hu Yuzhu” is an alias used by a former employee of Complainant. To substantiate this allegation, Complainant includes in its Attached Annexes G and H a ruling by the United States District Court for the Southern District of New York and a corresponding order, dated April 7, 2015, wherein the court stated that US ITT shall be “considered to have admitted” associating Hu Yuzhu with imposter companies in Hong Kong also affiliated with US ITT. ITT Manufacturing Enterprises LLC and ITT Corporation v. US ITT Machinery Limited, 14-CV-7941 KMK, D.I. 12 (S.D.N.Y., April 7, 2015). Additionally, Complainant urges that “Xu Min” is an alias, proxy, or co-conspirator of Hu Yuzhu and/or US ITT, and that the content associated with the domain names and the WHOIS information corroborate control by a single Respondent. See Compl., at Attached Annexes E1-E3 (demonstrating website content associated with the disputed domain names referencing US ITT); see also Compl., at Attached Annexes A1-A3 (WHOIS listing each registrant’s email address as 843147311@qq.com).
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 may be conducted in English.
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it has rights in the ITT mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,372,168, registered November 26, 1985). Panels have routinely held that a complainant adequately demonstrates rights in a mark through registration with the USPTO even where a respondent resides or operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Nat. Arb. Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Accordingly the Panel finds that Respondent has rights in the ITT mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ITT mark. Complainant contends that Respondent’s disputed domain names are confusingly similar to the ITT mark in which Complainant submits it has rights. Respondent’s disputed <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names all incorporate the ITT mark and the city name “nanjing” or an acronym signifying Nanjing “nj.” Panels have held that the addition of a geographic term or indicator to a complainant’s mark in a domain name does not differentiate the domain name from the mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Panels also find that the addition of a gTLD is not relevant to an analysis of confusing similarity. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The Panel therefore finds that Respondent’s <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names are confusingly similar to the ITT mark under Policy ¶4 (a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ITT mark and to use it in its domain names which are confusingly similar to the mark;
(b) Respondent registered the <ittnanjing.com> domain name on August 28, 2013, the <nanjingitt.com> domain name on May 23, 2013 and
the <njitt.com> domain name on May 12, 2011;
(c) Respondent has used the disputed domain names to pass itself of as Complainant, to divert internet users to its illegitimate website, to create confusion between Complainant’s mark and Respondent’s disputed domain names and with actual knowledge of the ITT mark and Complainant’s rights in the mark.
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has not been affiliated with Complainant, authorized to use Complainant’s marks, or been commonly known by the disputed domain names. WHOIS information indicates that Respondent registered the disputed domain names using the names “hu yuzhu” and “xu min,” neither of which resembles the disputed domain names. Further, Respondent has made no effort to rebut the submissions made by Complainant. Panels have held that WHOIS information, as well as a lack of evidence to the contrary can indicate that a respondent is not commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii);
(f) Complainant also argues that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to be using the disputed domain names to operate websites that display the letters “ITT,” some of which use the stylized font and graphic of Complainant’s marks. See Compl., at Annex E1, E2, E3 (resolving websites for the disputed domain names). The Panel notes a comprehensive list of Complainant’s formative registrations for the ITT mark attached at Annex C. Further, Respondent’s domain names display advertisements for water pumps in competition with those of Complainant. See Compl., at Annex E1, E2, E3. Panels have held that operating a website at a confusingly similar domain name, which sells goods competing with or replicating a complainant’s goods, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and implied that the respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). The Panel finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has used the disputed domain names in bad faith through competing and disrupting Complainant’s business. Respondent is using the disputed domain names to operate a website that displays water pumps in competition with Complainant’s business. Compare Compl., at Attached Annexes E1, E2, E3 (resolving websites), with Compl., at Attached Annex D (demonstrating Complainant’s business / product offerings). Panels have found a respondent to have acted in bad faith where it is inferred that a respondent registered and is using the disputed domain name to disrupt and compete with complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Accordingly the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent has registered and uses the disputed domains in bad faith through confusing and attracting internet users for commercial profit. Again, the Panel notes that Respondent appears to use the disputed domain names to operate websites that are similar to Complainant’s and offer products that compete with Complainant’s products. See Compl., at Attached Annexes E1, E2, E3. Panels have found that an offering of competing products on a confusingly similar domain name can constitute bad faith under Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). The Panel thus finds that Respondent has registered and is using the disputed domain names in bad faith.
Thirdly, Complainant asserts that Respondent registered the <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names with actual knowledge of the ITT mark, Complainant’s use in connection with the mark, and Complainant’s rights in the mark. In arguing this point, Complainant urges that its mark has garnered worldwide recognition. More specifically, Complainant identifies evidence of Respondent’s actual knowledge because Respondent’s websites claim an affiliation with US ITT, they contain a purportedly false history reminiscent of Complainant’s actual company history, they make extensive use of the ITT mark, and lastly, they advertise and offer for sale products that appear identical to Complainant’s products. Therefore, the Panel finds, as the panel found in Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed), that Respondent registered and used the disputed domain names with actual knowledge pursuant to Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <ittnanjing.com>, <nanjingitt.com> and <njitt.com> domain names using the ITT mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ittnanjing.com>, <nanjingitt.com>, and <njitt.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 4, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page