Iwaki America Inc. v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Claim Number: FA1604001670064
Complainant is Iwaki America Inc. (“Complainant”), represented by Cynthia Johnson Walden of Fish & Richardson P.C., Massachusetts, USA. Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walchem.net> (“Domain Name”), registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David L. Kreider, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 11, 2016; the Forum received payment on April 11, 2016.
On April 13, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <walchem.net> 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 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@walchem.net. Also on April 13, 2016, 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.
The Respondent submitted timely its Response to the Complaint on April 16, 2016. The Response is written in Chinese and English.
On May 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David L. Kreider 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Iwaki America Inc. (hereinafter “Iwaki” or “Complainant”), is in the business of providing pump and chemical handling equipment design, manufacturing and support to the OEM, industrial, chemical process and semiconductor industries. With over 50 years of experience, Iwaki has developed a strong reputation for its work related to pump and chemical handling equipment.
Iwaki owns and operates Walchem, which is a leading global manufacturer of on-line analytical instruments and electronic metering pumps. The WALCHEM trademark was first used at least as early as January 1989, and has continuously used this trademark in the United States commerce since that time. In addition to its longstanding common law rights in this mark, Iwaki owns an incontestable United States federal trademark registration for the mark. Complainant also registered the domain name <walchem.com> on August 20, 1996, and has used this domain name in connection with the advertising and offering of its goods and services under the WALCHEM mark since that date.
By evidence of its incontestable trademark registration for WALCHEM, Iwaki has established valid common-law and statutory rights in its distinctive WALCHEM mark long before Respondent registered the <walchem.net> domain name on July 27, 2014.
The Domain Name Registered and Used by Respondent is Nearly Identical and/or Confusingly Similar to the Complainant’s Mark
Complainant Iwaki is the owner of rights in its WALCHEM mark by virtue of incontestable, federal trademark registration and its longstanding and continuous common-law use of the mark. Federal registration by Complainant of its mark establishes Complainant’s rights in the WALCHEM mark under UDRP Policy ¶ 4(a)(i). See Next Education, LLC v. Vibhooti Kishor/Animation Mentor, FA 1450133 (Nat Arb. Forum Aug. 9, 2012) (“Typically, panels find that registration with the USPTO establishes rights in a given mark”). See also Microsoft Corp. v. Burkes, FA 652742 (Nat. Arb. Forum Apr. 17, 2006); Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005).
Iwaki’s registration of the WALCHEM mark is prima facie evidence of its validity, which creates a rebuttable presumption that the mark is distinctive and shifts the burden to Respondent to refute this assumption. See Papa John’s International, Inc. v. Pratap, FA 1427509 (Nat. Arb. Forum March 20, 2012) (“[O]nce the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue.”). See also Miller Products Company v. Marc Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”); See also Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption).
Respondent Has No Rights or Legitimate Interests in the Domain Names
Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services, nor is Respondent making a non-commercial fair use of the Domain Name. Rather, Respondent is using the Domain Name to offer counterfeited goods falsely branded under the WALCHEM mark, without any such authorization to so use the Complainant’s trademark. It is well established that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See World Wrestling Entertainment, Inc. v augle thee / company, FA 1602001662432 (Forum, Mar. 28, 2016) (finding that “[t]he use of a domain name to sell counterfeit goods is not a bona fide offering nor a legitimate noncommercial or fair use”); eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant has never authorized or licensed Respondent to incorporate the WALCHEM mark into the Domain Name, or to otherwise use the WALCHEM mark in any fashion. See STMicroelectronics, Inc. v. UniQuip Plus, Inc., FA 1371892 (Nat. Arb. Forum Mar. 9, 2011) (concluding that the respondent was not “commonly known by” the disputed domain names based on WHOIS information and the fact that complainant had not authorized the respondent to register a domain name incorporating its mark). See also Reese v. Morgan, FA 0917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the subject domain name because there was no evidence of such in the record, including the WHOIS information as well as the complainant’s allegation that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent Registered and is Using the Domain Name in Bad Faith
Respondent’s registration and use of the Domain Name are in bad faith because: (1) Respondent was on notice of Complainant’s rights in the WALCHEM mark when it registered the Domain Name; and (2) Respondent has engaged in a pattern of registering domain names containing the mark of others.
Respondent’s offering of counterfeit products at the resolving website indicates that Respondent had actual knowledge of Complainant’s mark and rights, which is enough to establish bad faith registration of the domain name under Policy ¶ 4(a)(iii). See World Wrestling Entertainment, Inc. v augle thee / company, FA 1602001662432 (Forum, Mar. 28, 2016) (finding that the Respondent’s offering of counterfeited products was sufficient to establish that Respondent registered the domain name in bad faith); see also Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent “actual knowledge of Complainant's mark when registering the disputed domain name”).
Thus, Respondent registered and is using the Domain Name with knowledge of Complainant’s prior trademark rights and with bad faith intent to trade upon those rights, thus clearly establishing bad faith under Paragraph 4(b)(ii) of the UDRP.
Respondent’s pattern of registering infringing domain names while preventing them from reflecting their marks in a domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii).”) Here, Respondent registered a domain names comprised of the WALCHEM mark owned by Complainant.
Indeed, an Internet search revealed that the Respondent, YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), has a substantial history of losing UDRP proceedings against Complainant’s with registered trademarks, including:
· H-D U.S.A., LLC v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), FA1411001591216 (Nat. Arb. Forum Dec. 22, 2014) (Complainant owns a U.S. registration for HD for motorcycles and motorcycle accessories; the Panel ordered the domain name <hd-jacket.com> transferred to Complainant).
· Skorpio Limited v. YinSi BaoHu Yi KaiQi (hidden by Whois Privacy Protection Service) /zhou Eaysu, Case No. D2014-1547 (Complainant owns an international registration for RICK OWENS for footwear; the Panel ordered the domain name <owenssneakers.com> transferred to Complainant).
· Novartis AG v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), FA1412001595426 (Nat. Arb. Forum Jan. 24, 2015) (Complaint owns U.S. trademark registrations for ALCON and FRESHLOOK; the Panel ordered the domain names <alconfreshlook.com> transferred to Complainant).
· Electrolux v. Zhang Yu Han / YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), Case No. D2015-1003 (Complainant owns various registrations for ELECTROLUX around the world; the Panel ordered the domain name <electroluxwx.net> transferred to Complainant).
The UDRP decisions above are cases in which Respondent registered domain names containing third-party trademark registrations, in which the Respondent was ordered to transfer the domain names to the rightful owner. As the various panels decided, this is conclusive evidence of Respondent’s bad faith registration of the domain names.
In short, the overwhelming evidence presented by Complainant clearly shows that Respondent’s registration and use of the Domain Name constitutes bad faith under Paragraph 4(b)(ii) of the UDRP.
B. Respondent
The Respondent submitted timely an email (“Response”) consisting of a single paragraph of Chinese followed by a translation of the same content into English. The Respondent concedes that he or she is the registrant of the Domain Name and claims that the primary objective in registering the Domain Name was to “better promote and market Complainant’s products in China”. Respondent further asserts that he or she shut down permanently the website to which the Domain Name resolves upon receiving the Complaint. The Response incorporates a screen shot of Respondent’s website at <www.walchem.net> to evidence that the website is no longer functional.
C. Additional Submissions / Language
Complainant requests that this proceeding move forward in English. Although Paragraph 11 of the UDRP Rules provides that in the absence of an agreement “the language of the administrative proceeding shall be the language of the Registration Agreement,” it is widely accepted that “[t]he spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.” Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989 (Feb. 12, 2004).
In the present case, the Complainant asserts that it is appropriate to proceed in English because the Respondent has demonstrated an ability to understand English as evidenced by including an “English” translation button on the webpage that appears at <walchem.net>. In contrast, the Complainant and its attorneys are unable to communicate in Chinese and therefore if required to submit all documents in Chinese, the arbitration proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679 (Nov. 13, 2003) (the proceeding allowed to move forward in English where the Respondent demonstrates an ability to understand English and the Complainant would experience an undue hardship proceeding in Korean, the language of the registration agreement); see also SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400 (May 12, 2008) (the Panel inferred that the Respondent was able to understand and communicate in English because the Respondent’s website was in English and the domain name was in English, whereas the Complainant would experience substantial expense and delay if the Complaint had to be translated into Chinese).
The Panel is himself fluent in Mandarin Chinese in addition to his native English. After considering the circumstances of the present case, noting in particular, that Respondent’s Chinese-language Response incorporates a brief, yet accurate English translation, the Panel decides that the proceeding should be 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.
The Panel finds that the disputed domain name <walchem.net> is identical to Complainant’s WALCHEM mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent uses the Domain Name to sell counterfeit versions of Complainant’s products. Respondent has admitted that his or her objective in registering the Domain Name is to promote and market Complainant’s products using Respondent’s website. Complainant has not authorized Respondent to use its Mark or to sell or distribute Complainant’s products.
The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or that Respondent is engaged in a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Respondent admits that his or her objective in registering the Domain Name was to promote and market Complainant’s products in China. Based on Respondent’s admission, the Panel finds that the respondent had full knowledge of the complainant’s Mark at the time the disputed domain name was registered and that Respondent registered and is using the disputed domain name in bad faith pursuant to 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 <walchem.net> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Esq., Panelist
Dated: 10 May 2016
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