Deere & Company v. xing xue bin
Claim Number: FA1703001721657
Complainant is Deere & Company (“Complainant”), Illinois, USA. Respondent is xing xue bin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johndeere-cn.com>, registered with Xinnet Technology Corporation.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2017; the Forum received payment on March 15, 2017. The Complaint was received in both Chinese and English.
On Mar 15, 2017, Xinnet Technology Corporation confirmed by e-mail to the Forum that the <johndeere-cn.com> domain name(s) is/are registered with Xinnet Technology Corporation and that Respondent is the current registrant of the names. Xinnet Technology Corporation has verified that Respondent is bound by the Xinnet Technology Corporation 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 March 21, 2017, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 10, 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@johndeere-cn.com. Also on March 21, 2017, the Chinese 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 April 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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, Deere & Company, is the world’s largest manufacturer of agricultural equipment and a leading supplier of equipment for construction, forestry, and turf care, including lawn mowers for professional and residential markets. In connection with this business, Complainant uses the JOHN DEERE mark to brand and market products sold in more than 20 countries worldwide. Complainant has rights to the JOHN DEERE mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 91,860, registered June 3, 1913). See Compl., at Attached Annexes 1–2. Respondent’s <johndeere-cn.com> is confusingly similar to Complainant’s JOHN DEERE mark, as the domain name contains the mark in its entirety—less the space—and appends a hyphen, the geographic term “cn,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <johndeere-cn.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the JOHN DEERE mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website being used for the promotion and sale of agriculture equipment in direct competition with Complainant’s business. See Compl., at Attached Annex 9–10.
3. Respondent should be considered to have registered and used <johndeere-cn.com> in bad faith. Respondent has offered to sell the disputed domain name to Complainant. See Compl., at Attached Annex 15. Additionally, Respondent is using the disputed domain name to attract Internet users to its resolving website, which it uses to compete with Complainant’s business. Further, the JOHN DEERE mark is so famous that use of it in a disputed domain name amounts to opportunistic bad faith. Finally, due to the fame of the mark, as well as cease-and-desist letters sent to Respondent, it is clear that Respondent had actual or constructive notice of Complainant’s rights in the mark.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. After review of the applicable rules on language of the proceedings under the UDRP, and pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification. In the absence of a Response, the Panel determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <johndeere-cn.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark.
2. Respondent does not have any rights or legitimate interests in the <johndeere-cn.com> domain name.
3. Respondent registered or used the <johndeere-cn.com> 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.”).
Complainant claims rights in the JOHN DEERE mark based upon registration of the mark with the USPTO (e.g. Reg. No. 91,860, registered June 3, 1913). See Compl., at Attached Annexes 1–2. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the JOHN DEERE mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <johndeere-cn.com> is confusingly similar to Complainant’s JOHN DEERE mark, as the disputed domain name contains the mark in its entirety—less the space—and merely adds a hyphen, the geographic term “cn,” and the gTLD “.com.” Omission of a space and addition of a hyphen and gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis for confusing similarity. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Similarly, an addition of a geographic term does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). The Panel therefore finds that the <johndeere-cn.com> is confusingly similar to Complainant’s JOHN DEERE mark per Policy ¶ 4(a)(i).
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), and 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights or legitimate interests in <johndeere-cn.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the JOHN DEERE mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed 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 “xing xue bin.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a
complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website being used to display Complainant’s marks and offer agricultural equipment in direct competition with Complainant’s business. See generally Compl., at Attached Annex 10 (the Home page, about us, and Products pages of <johndeere-cn.com>). Use of a disputed domain name to compete with a complainant’s business, and to offer the complainant’s own products are not uses which demonstrate rights or legitimate interests per Policy ¶¶ (c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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). The Panel therefore finds that Respondent is not using the disputed domain name to make a bona fide offering of goods and services or for a legitimate noncommercial or fair use and thus lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent’s offer to sell <johndeere-cn.com> to Complainant is evidence of Respondent’s bad faith. An offer of a sale of a disputed domain name to a complainant can be evidence of bad faith registration and use per Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). But cf. Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Respondent responded to a cease-and-desist letter from Complainant with an offer to sell Complainant the disputed domain name. Complainant contends that due to the fame and notoriety of its JOHN DEERE mark, the value of the disputed domain name is based on its confusing similarity to the mark. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i) based on its offer to sell.
Complainant also contends that Respondent’s bad faith is evident through its use of <johndeere-cn.com> to attract Internet users to the resolving website, which it uses to compete directly with Complainant’s business. Use of a confusingly similar disputed domain name and resolving website to compete directly with a complainant can be evidence of Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Fossil Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). The Panel may recall that the disputed domain name resolves to a website offering for sale agricultural machinery—including Complainant’s products—in direct competition with Complainant’s business. See Compl., at Attached Annexes 9–10. The Panel therefore finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent’s registration of <johndeere-cn.com> amounts to opportunistic bad faith, based upon the fame and notoriety of the JOHN DEERE mark. Registration of a domain name connected to a famous, well-known mark can be evidence of opportunistic bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith). Complainant points to its multiple trademark registrations in the United States and China, as well its long, uninterrupted use of the mark throughout the world. The Panel agrees and finds Respondent evinces opportunistic bad faith.
Complainant also argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the JOHN DEERE mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Complainant also points to the cease and desist letter sent to Respondent as evidence Respondent was on notice of Complainant’s rights. See Compl., at Attached Annex 15. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johndeere-cn.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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