QuanZhou OUXUN Electronics Co., Ltd. v. Ed Griffin
Claim Number: FA1702001719044
Complainant is QuanZhou OUXUN Electronics Co., Ltd. (“Complainant”), China. Respondent is Ed Griffin (“Respondent”), represented by Eric Misterovich of Revision Legal, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wouxun.us>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert as Panel Chair;
Terry F. Peppard as Panelist; and
Hon. Carolyn Marks Johnson (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2017; the Forum received payment on February 27, 2017.
On February 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wouxun.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@wouxun.us. Also on March 6, 2017, 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.
A timely Response was received and determined to be complete on March 30, 2017.
On April 12, 2017, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed
Michael A. Albert as Panel Chair;
Terry F. Peppard as Panelist; and
Hon. Carolyn Marks Johnson (Ret.) 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 usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends the disputed domain name <wouxun.us> is confusingly similar to Complainant’s WOUXUN mark. Complainant registered its WOUXUN mark on April 26, 2011 with the United States Patent and Trademark Office (“USPTO”) and further contends the mark was registered on April 14, 2010 with a State Administration for Industry and Commerce (“SAIC”), but does not provide a translation for said Chinese registration.
Respondent’s disputed domain name contains the WOUXUN mark in its entirety, with the addition of the generic top level domain (“gTLD”) <.us>.
Complaint further contends that Respondent does not have rights or legitimate interests in <wouxun.us> because Complainant has not authorized Respondent to use it, and Respondent does not have demonstrable rights in the mark. Complainant does not address the question of whether, or how, it has any familiarity, or prior business relations, with Respondent.
Finally, Complainant contends Respondent registered and continues to use <wouxun.us> in bad faith because the resolving webpage at the disputed domain competes with Complainant for commercial gain and includes untruthful statements which are harmful to Complainant’s mark.
B. Respondent
Respondent contends that it notified Complainant shortly after registering the disputed domain name <wouxun.us> and proceeded to operate the resolving webpage with Complainant’s support. Respondent contends it traveled to China to meet Complainant and that Respondent and Complainant were well-disposed to each other.
Respondent contends that it has operated the resolving webpage at the disputed domain name with a bona fide offering of goods or services, as evinced by its sales report and 5.5 million page views (average 2,000/day).
Respondent further contends business relations with Complainant deteriorated in 2014 because Complainant’s products were defective and the defects were not corrected. Respondent ceased offering Complainant’s products for sale and included disclaimers for customers that it no longer sells Complainant’s products on the resolving webpage of the disputed domain name.
Finally, Respondent contends that its registration and use of <wouxun.us> is not in bad faith under Policy Paragraph 4(a)(iii). Complainant’s products were sold on the resolving webpage and Complainant was aware of Respondent’s registration and use of the disputed domain name and failed to object for seven years.
Complainant operates the business QuanZhou OUXUN Electronics Co., Ltd., in China and in the United States selling two-way radios and accessories relating to wireless communication. The “WOUXUN” trademark registration is in Chinese, and no translation has been provided. As the language of this proceeding is English, the Panel cannot consider the Chinese registration for purposes of this decision.
Respondent started building antennas for amateur radio, commercial, and government markets in the 1990’s and 2000’s. In 2009, Respondent purchased a test order of radios from Complainant. In April 2010, Respondent ordered 100 hand-held radios from Complainant to resell in the United States.
On April 14, 2010, Respondent registered the disputed domain name <wouxun.us> . In emails dated May 16 and May 21, 2010, Respondent notified Complainant that it registered the disputed domain name. Complainant did not object to Respondent’s registration for seven years, until the filing of this present Complaint. Furthermore, Respondent was never contractually prohibited from registering the disputed domain name.
In October 2010, Respondent travelled to China to meet with Complainant to discuss radios, design modifications, and sales. Respondent visited Complainant in China again in 2011 and 2012. From 2010-2014, Respondent made a bona fide offering of goods and services using the disputed domain name, selling over 18,700 items through the resolving website.
In 2014, the business relationship between Respondent and Complainant ended because defects in Complainant’s products were not corrected. Complainant failed to provide any warranty for the defected products sold to Respondent. Respondent ceased selling Complainant’s products. Complainant did not object to the disputed domain until filing this action on February 27, 2017.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Policy’s purpose is to provide a forum to resolve abusive domain name registrations, not to resolve more complex trademark disputes or contractual issues. Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). The Panel must decide whether this Complaint involves a business or contractual dispute that is outside the scope of the Policy.
There is evidence of a business relationship between Complainant and Respondent beginning in April 2010 that was ongoing through 2014. Complainant, however, does not speak to its relationship with Respondent or even acknowledge that there was one, nor does it note that Respondent notified Complainant of the registration of the disputed domain name shortly after it was registered. “When the parties differ markedly with respect to basic facts . . . it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.” Love v. Barnett, FA 944826 (FORUM May 14, 2007).
As of the time that Respondent registered the domain name, it appears to have done so in good faith. Respondent purchased products from Complainant, notified Complainant of the domain registration, and personally visited Complainant in China three times prior to the souring of their business relationship due to degrading quality of Complainant’s products. In short, the present dispute between the parties appears to relate to the breakdown of a business relationship, rather than to the problem of abusive domain name “cybersquatting” for which the Policy was developed. As such, the Panel finds that this dispute falls outside the scope of the Policy. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”).
For the reasons presented above, the Panel concludes that relief shall be DENIED. Complainant remains free to bring any appropriate proceedings in another forum, with proper jurisdiction. The Complaint is DISMISSED.
Accordingly, it is Ordered that the <wouxun.us> domain name REMAIN WITH Respondent.
Michael A. Albert, Panel Chair,
Terry F. Peppard Panelist and
Hon. Carolyn Marks Johnson (Ret.) Panelist
Dated: 4/21/2017
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