Rockwell Automation v. Zhao Ke
Claim Number: FA1711001760051
Complainant is Rockwell Automation ("Complainant"), represented by CSC Digital Brand Services AB, Sweden. Respondent is Zhao Ke ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockwellautomation.co>, registered with eNom, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 27, 2017; the Forum received payment on November 27, 2017.
On November 28, 2017, eNom, LLC confirmed by email to the Forum that the <rockwellautomation.co> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 November 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@rockwellautomation.co. Also on November 28, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 December 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is the world's largest industrial automation company, with customers in more than 80 countries and annual global sales of $6.3 billion. Complainant employs about 22,000 individuals globally and has an extensive international network of authorized distributors. Complainant has used the ROCKWELL AUTOMATION mark in connection with its goods and services since 1994. The mark is registered in the United States, China, and other jurisdictions.
Respondent registered the disputed domain name <rockwellautomation.co> in December 2015. The domain name currently redirects Internet users to an apparently unrelated website, DealSnap, which offers a variety of products for sale. In addition, the domain name is listed for sale on a popular domain name marketplace, with a price of $9,999. Complainant states that Respondent Is not commonly known by the disputed domain name, is not sponsored by or affiliated with Complainant, and has not been granted permission to use Complainant's mark.
Complainant states further that Respondent has registered many other domain names incorporating well-known trademarks (including another domain name, <rockwellautomation.fi>, that also incorporates the ROCKWELL AUTOMATION mark); and that Respondent has been involved in numerous prior proceedings under the policy in which it was found to have registered and used other domain names in bad faith.
Complainant contends on these grounds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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.").
The disputed domain name <rockwellautomation.co> corresponds to Complainant's registered ROCKWELL AUTOMATION mark, with the space omitted and the ".co" top-level domain appended thereto. These alterations do not distinguish the domain name from Complainant's mark for purposes of the Policy. See, e.g., Kenneth Cole Productions (LlC), LLC, Kenneth Cole Productions, Inc. v. Laurie Udy, DCO2017-0017 (WIPO Aug. 11, 2017) (finding <kennethcole.co> identical to KENNETH COLE); Alex & Ani, LLC v. Li Zhongji, FA 1720257 (Forum Apr. 12, 2017) (finding <alexandani.co> identical to ALEX AND ANI). The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's well-known mark. It is being offered for sale and is being used to redirect Internet users to a commercial website. Neither of these uses is likely to give rise to rights or legitimate interests. See, e.g., Boehringer Ingelheim Pharma GmbH & Co. KG v. Zhao Ke, DES2016-0035 (WIPO Dec. 20, 2016) (finding lack of rights or legitimate interests under similar circumstances); Sopra Steria Group v. Zhao Ke, D2016-0151 (WIPO Mar. 22, 2016) (same); Rolls Royce Motor Cars Ltd. v. Zhao Ke, DNL2015-0062 (WIPO Dec. 8, 2015) (same); Stuart Weitzman IP, LLC v. Zhao Ke, DME2015-0003 (WIPO June 9, 2015) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name is being offered for sale at a substantial premium over its registration cost, presumably in the hope of soliciting an offer from Complainant or a competitor thereof; and it is being used to divert Internet users seeking Complainant to an unrelated website, presumably for Respondent's commercial gain. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name for these purposes and with Complainant's mark in mind. The evidence, including the previous panel decisions cited above, further indicates that Respondent has engaged in a pattern of bad faith domain name registrations for purposes of paragraph 4(b)(ii). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockwellautomation.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 2, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page