Emerson Electric Co. v. UGur ErtUrk
Claim Number: FA1512001651362
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is UGur ErtUrk (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emersonservis.com> and <emersonklimaservis.com>, registered with Nics Telekomünikasyon Ticaret Ltd. Sti.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2015; the Forum received payment on December 17, 2015. The Complaint was received both in Turkish and English.
On December 18, 2015, Nics Telekomünikasyon Ticaret Ltd. Sti. confirmed by e-mail to the Forum that the <emersonservis.com> and <emersonklimaservis.com> domain names are registered with Nics Telekomünikasyon Ticaret Ltd. Sti. and that Respondent is the current registrant of the names. Nics Telekomünikasyon Ticaret Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Ticaret Ltd. Sti. 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 December 18, 2015, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of January 7, 2016 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@emersonservis.com, postmaster@emersonklimaservis.com. Also on December 18, 2015, the Turkish 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 January 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the EMERSON mark based on registration of the mark with numerous trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered August 14, 1916). Respondent’s disputed <emersonservis.com> and <emersonklimaservis.com> domains are confusingly similar to the EMERSON mark as the domains include the mark in its entirety and merely add generic Turkish terms related to Complainant’s business such as “servis,” meaning service, and “klima,” meaning air conditioning.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been affiliated with Complainant, given permission to use Complainant’s trademark, or been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain names, to sell products of Complainant’s competitors, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s use of the domains competes and disrupts complainant’s business through offering of products that compete with Complainant’s. Respondent’s use demonstrates an intent to confuse and attract internet users to the disputed domains for Respondent’s commercial gain. Respondent also had actual knowledge of Complainant’s trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Emerson Electric Co. of St. Louis, MO, USA. Complainant is the owner of numerous domestic and international registrations for the mark EMERSON, including a registration in Turkey. Complainant has continuously used the mark since at least as early as 1916 in connection with the provision of goods and services in its global manufacturing and technology business.
Respondent is UGur ErtUrk, of Istanbul, Turkey. Respondent’s registrar’s address is listed as Istanbul, Turkey as well. The Panel notes that the disputed domain <emersonservis.com> was created on August 18, 2014 and the <emersonklimaservis.com> domain was created on March 3, 2015.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(f), 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 claims that its rights in the EMERSON mark stem from registration of the mark with the USPTO (e.g., Reg. No. 111,931, registered August 14, 1916). Prior panels have held that registration of a domain with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). The Panel here finds that registration with the USPTO is sufficient to establish rights in the trademark.
Complainant next argues that Respondent’s disputed domains <emersonservis.com> and <emersonklimaservis.com> are confusingly similar to the EMERSON mark in which Complainant asserts rights. Both disputed domains include the entire EMERSON mark, add generic terms, and the generic top level domain (“gTLD”) “.com.” Past panels have found that the gTLD “.com” is not relevant when conducting an analysis of confusing similarity under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Previous panels have also held that the addition of generic terms to a mark fails to distinguish a domain from the mark to which the generic terms are added. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds non-distinctive, descriptive and generic terms, some of which describe Complainant’s business.”). The Panel here finds that Respondent’s disputed domains are confusingly similar to Complainant’s EMERSON mark.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has not been affiliated with Complainant, given permission to use Complainant’s trademark, or been commonly known by the disputed domain names. WHOIS information associated with the disputed domain names indicates that Respondent registered the domains using the name “Ugur ErtUrk,” which does not resemble the domains. Prior panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. 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). The Panel here finds that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant further 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 use the disputed domains to resolve to websites that offers products and services of Complainant and Complainant’s competitors. Past panels have held that use of a confusingly similar domain to sell a complainant or complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). The Panel here finds that Respondent’s use does not fall within the permissible uses of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent’s bad faith is evident through using the domains to compete and disrupt complainant’s business by offering products that compete with Complainant’s. As previously noted, Respondent’s domains resolve to websites that display products of Complainant’s and Complainant’s competitors. Previous panels have found bad faith disruption and competition where a domain was used to divert users to a competing website that offered a complainant’s or a complainant’s competitors’ products. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). The Panel here finds bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s use of the EMERSON mark in the domain demonstrates an intent to confuse and attract internet users to the disputed domain for Respondent’s commercial gain. Again, Respondent uses the disputed domains <emersonservis.com> and <emersonklimaservis.com> to resolve to a website that offers Complainant’s products for sale. Prior panels have found bad faith where a respondent used domains that are confusingly similar to another’s mark for the purposes of selling a complainant’s products without authorization. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel here finds that Respondent has created a likelihood of confusion through the registration and use of the domain names from which Respondent profits, and that such behavior supports a finding that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonservis.com> and <emersonklimaservis.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 28, 2016
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