NSK LTD. v. Shang Yin Zhou / Xi An Nuo Kai Ji Dian She Bei You Xian Gong Si
Claim Number: FA1612001709239
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf LLP, Michigan, USA. Respondent is Shang Yin Zhou / Xi An Nuo Kai Ji Dian She Bei You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nk-bearing.com>, registered with HiChina Zhicheng Technology Limited.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2016; the Forum received payment on December 22, 2016.
On December 23, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <nk-bearing.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@nk-bearing.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 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, NSK LTD., is a global seller of bearing and industrial products to a wide array of industries. Complainant has rights to the NSK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 857,857, registered Oct. 1, 1968).
2. Respondent’s <nk-bearing.com>[1] domain name is confusingly similar to the NSK mark, as it contains the mark, omitting the letter “s” and adding a hyphen, the generic top-level domain (“gTLD”) “.com,” and the term “bearings.” The addition of the term “bearings” increases the confusing similarity, as it clearly describes the core goods of Complainant.
3. Respondent does not have rights or legitimate interests in the <nk-bearing.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the NSK mark in any form or fashion.
4. Further, Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use with the domain name. Rather, the domain name resolves to Respondent’s own commercial site.
5. Respondent registered and has used <nk-bearing.com> in bad faith. Respondent has indicated a clear desire to intentionally attract Internet users for commercial gain by creating confusion using the NSK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NSK mark. Respondent’s domain name is confusingly similar to Complainant’s NSK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nk-bearing.com> domain name and that Respondent registered and uses the domain name in bad faith.
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.”).
Preliminary Issue: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. Complainant has submitted the Complaint in English. Complainant contends Respondent is fully capable of defending the Complaint in the English language because Respondent utilizes the disputed domain name and resolving website in the business of selling products using the English language. Additionally, Respondent utilizes the Alibaba on-line sales portal, which target English-speaking customers.
Complainant has rights in the NSK mark based on registration of the mark with the USPTO (e.g., Reg. No. 857,857, registered Oct. 1, 1968). Registration of a mark with the USPTO is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (FORUM Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Complainant argues that <nk-bearing.com> is confusingly similar to the NSK mark, as the domain contains the mark—less the letter “s”—and adds a hyphen, the descriptive term “bearings,” and the gTLD “.com.” Omission of a letter and addition of a gTLD does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (FORUM July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Similarly, addition of a descriptive term does not remove a domain name from confusing similarity with a mark. See Gillette Co. v. RFK Assocs., FA 492867 (FORUM July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Punctuation such as hyphens are inconsequential in a Policy ¶ 4 (a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (FORUM Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel agrees that the <nk-bearing.com> domain name is confusingly similar to the NSK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <nk-bearing.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <nk-bearing.com> as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the NSK mark in any form or fashion. Where a response is omitted, WHOIS information can support a finding that the respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (FORUM July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Shang Yin Zhou” with “XI An Nuo Kai Ji Dian She Bei You Xian Gong Si,” which Complainant contends translates to “Xi’ An Nocquet Electromechanical Equipment Co. Ltd.” Additionally, there is nothing in the record to indicate that the Respondent has been authorized to register a domain name using the Complainant’s mark thus supporting a finding that Respondent does not have rights or legitimate interests in the <nk-bearing.com> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (FORUM June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Moreover, Complainant has not authorized Respondent to use the NSK mark or content in a domain name or on the resolving site. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <nk-bearing.com> domain name.
Complainant next claims Respondent is not using the domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant has shown that the <nk-bearing.com> domain name resolves to Respondent’s own commercial site where Respondent offers for sale products which it falsely claims are Complainant’s products. Use of a domain name to resolve to a competing commercial website is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC., FA 1581942 (FORUM Nov 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Therefore, the Panel agrees that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent has registered and used <nk-bearing.com> in bad faith by attempting to attract Internet users for commercial gain. Complainant argues that the use of the confusingly similar domain name to host links and content promoting the offering and sale of purported NSK bearings indicates the purpose of Respondent to intentionally attract Internet users to Respondent’s competing website by creating confusion with Complainant’s NSK mark. The use of a domain name which incorporates the mark of another to confuse and attract Internet users for commercial gain indicates bad faith as described in Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel agrees and finds Respondent registered and uses the <nk-bearing.com> domain in bad faith per Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <nk-bearing.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 3, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page