NSK LTD. v. Ma Qing Wei
Claim Number: FA1612001708693
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf LLP, Michigan, USA. Respondent is Ma Qing Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nsk-ina-fag.com>, 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 as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 23, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <nsk-ina-fag.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 December 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@nsk-ina-fag.com. Also on December 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2017, 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Since the registration of the nsk-ina-fag.com domain name on September 19, 2014, Respondent has engaged in the directed and volitional activity of adopting and using the domain name nsk-ina-fag.com in a wholly unauthorized manner to divert prospective consumers, users, and internet viewers to Respondent’s site, not only to offer and sell unauthorized bearings products under the mistaken belief that they originate with Complainant and true trademark owner under the NSK mark (consisting of bearing goods of unknown origin and quality), but where the nsk-ina-fag.com site itself arguably morphs into a “click-through” site which offers, promotes, and sells directly competing bearing products which claim to be “NSK Bearings”, under the prior federally registered rights in the NSK mark. Support for this specific “click-through” position is proffered not only through Respondent’s own website content, but equally by Respondent’s own choice and selection of the nsk-ina-fag.com itself which expressly and explicitly includes the inclusion of BOTH the “INA” and “FAG” components as nsk-ina-fag.com where INA and FAG are each existing and fully functioning brands of competing bearing products owned by a third party entity having no affiliation with NSK. In this regard, NSK is not advancing the putative rights of the third party INA and FAG trademark owner, but reiterates that there is absolutely no affiliation between the INA/FAG and NSK brands.
Respondent is currently using the domain name nsk-ina-fag.com to divert users to Respondent’s site, which offers, promotes, and sells directly competing bearing products as “NSK” branded products (i.e. the undeniable “registered goods” set forth in Complainant’s asserted trademark registrations) as shown in the prior federally registered rights in the NSK mark as well as Complainant’s own prior and authorized/official site found at nskamericas.com. Respondent directly overlaps, and trades upon, this bearing-related content and material through the nsk-ina-fag.com website. Respondent has no rights or legitimate interests relating to the nsk-ina-fag.com domain name and, to the extent that the site exists and functions to make any bona fide offer of the same type of bearing goods and products previously federally registered in and through the NSK trademarks. Respondent’s actions are an almost textbook case of trademark infringement since Respondent’s subject domain name, nsk-ina-fag.com, is identical to Complainant’s longstanding and NSK mark for directly identical bearing products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Although the language of the registration agreement is Chinese, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
Respondent has not made any bona fide offering of good or services, nor any legitimate non-commercial or fair use of the domain name. Complainant contends that Respondent’s <nsk-ina-fag.com> resolves to a click-through page diverting users to non-authorized distributors of NSK products and competing hyperlinks presumably for Respondent’s profit.
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 (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.”).
For years prior to the creation of the disputed nsk-ina-fag.com domain name on 19 September 2014, Complainant has both used and taken steps to protect and register the NSK mark to promote and sell its bearing products and goods, culminating in the issuance of multiple federal trademark registrations for the NSK mark before the U.S. Patent & Trademark Office and numerous foreign equivalents.
Although Complainant readily acknowledges that it is not the trademark owner of the discrete “INA” or “FAG” components also found in the disputed domain name, nsk-ina-fag.com, it is affirmatively stated that EACH of the “INA” and “FAG” components were adopted/selected by Respondent in an equally unlawful manner where “INA” and “FAG” are third party brands of bearing products which compete with Complainant, NSK.
Complainant cites and relies upon BookIt.com, Inc. v. PrivacyProtect.org/ICS Inc., WIPO Case No. D2013-0775, where the respondent at issue claimed rights in the domain name extranetbookit.com in comparison to the asserted rights in bookit.com. It was determined “that the mere addition of the generic and descriptive term ‘extranet’ is not sufficient to avoid a confusing similarity between the disputed domain name and Complainant’s mark.” Applying this reasoning to nsk-ina-fag.com, NSK likewise states that “bearings” are the core goods of NSK (i.e. bearings and bearing products), which are undeniably set forth in the registered goods clauses of the existing, incontestable, and issued federal trademark registrations for the NSK mark. In contrast, Respondent’s activities are an equally clear attempt to seemingly take advantage of an Internet user’s interest in “NSK Bearings” to divert traffic to Respondent’s site and also serve as a “click-through” destination to demonstrably non-authorized distributors and sellers of actual NSK bearing products.
The Panel finds that the disputed domain name is identical to the NSK mark and goods. Complainant satisfies the first element of proof required under ICANN Policy § 4(a).
Rights or Legitimate Interests
Complainant has not authorized Respondent to use the NSK mark. Respondent has no legitimate interest in the nsk-ina-fag.com domain name. Panels have held that respondents using domain names to direct users to competing hyperlinks or sell complainant’s goods are not using the domain name in connection with bona fide offering of goods or services or a legitimate non-commercial use. See Nike, Inc. v. Dias, FA 135016 (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).
Complainant satisfies the second element of proof required under ICANN Policy § 4(a).
Bad faith may be inferred when “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The registration and use of a domain name to re-direct Internet users to a website that offers products and services in competition with Complainant’s services, constitutes bad faith registration and use. The fact that the disputed domain name nsk-ina-fag.com has links and content promoting the offering and sale of supposed identical NSK-branded bearings on the fag-nsk-ina-bearings.com website indicates a clear desire of Respondent to intentionally attract Internet users to their web site by creating confusion using any of the NSK, INA, and/or FAG mark(s) to traffic in the same exact registered goods (i.e. bearings).
Complainant satisfies the third element of proof required under ICANN Policy § 4(a).
Having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nsk-ina-fag.com> domain name be TRANSFERRED from Respondent to Complainant.
David L. Kreider, Panelist
Dated: February 5, 2017
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