Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si
Claim Number: FA1807001798802
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bransdn.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 27, 2018; the Forum received payment on July 27, 2018.
On July 30, 2018, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <bransdn.com> domain name (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the Domain Name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 August 7, 2018, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 27, 2018 by which Respondent could file a Response to the Amended Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bransdn.com. Also on August 7, 2018, the Written Notice of the Amended 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 August 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE
Language of the Proceedings
Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, but it also provides, and UDRP panels have affirmed, that the Panel has discretion to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the case. FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). The registration agreement for the Domain Name is written in Chinese, but Complainant alleges that, for a number of reasons, the proceeding should be conducted in English. It argues (i) that it is unable to communicate in Chinese and that being required to make translations from English to Chinese would unfairly disadvantage it, (ii) that the Domain Name is comprised of Latin letters, (iii) that the web site resolving from the Domain Name contains many phrases written in English, and (iv) that Respondent’s use of the Domain Name to pass itself off as Complainant and offer Complainant’s products for sale without authorization from Complainant is obviously abusive and Complainant should not be put to the expense and delay of conducting the proceedings in Chinese.
Pursuant to Rule 11(a) the Panel evaluates the circumstances of this case as follows: The Domain Name is based upon the name of an American company. Much of the text appearing on the web site resolving from it is English and the site targets English speakers as well as Chinese. See, Amended Complaint Exhibit C. Further, while the Amended Complaint is written in English, one copy of the Written Notice of the Complaint sent to Respondent by The Forum is written in Chinese and Respondent has filed no protest or objection to the Amended Complaint or to these proceedings being conducted in English.
On this evidence, the Panel finds that the Respondent is conversant and proficient in the English language and has made no objection or protest to these proceedings being conducted in English. After considering the circumstances of the case, and pursuant to UDRP Rule 11(a), the Panel decides that the proceeding will proceed in the English language.
A. Complainant
Complainant is a diversified, global manufacturing and technology company that sells its goods and services in connection with the BRANSON mark. Branson Ultrasonics Corporation registered its BRANSON mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 168788) on December 30, 1982. Complainant acquired the Branson corporation, and its rights in the BRANSON mark, in 1984. Complainant also registered the BRANSON mark in its own name with the SAIC (Reg. No. 16820774A) on April 23, 1885, and these registrations establish its rights in the mark. Respondent’s Domain Name is identical and/or confusingly similar to Complainant’s BRANSON mark as it incorporates the mark in its entirety, altering it only by a misspelling which replaces the letter “o” with a “d”, and adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not permitted or authorized it to use the BRANSON mark and Respondent is not commonly known by the Domain Name. Additionally, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use but instead is using it to pass itself off as Complainant.
Respondent registered and uses the Domain Name in bad faith. From Respondent’s one-letter misspelling of Complainant’s mark, from the knowledge of and familiarity with Complainant’s products demonstrated by the contents of Respondent’s web site, and from the displays of Complainant’s mark on Respondent’s web site, it is evident that Respondent had actual knowledge of Complainant and its rights in the mark when it registered the Domain Name. Further, the practice of “typosquatting,” which Respondent has done in this case, has been taken in and of itself to demonstrate bad faith use and registration. Also, Respondent uses the confusingly similar Domain Name to attract, for commercial gain, users to its web site, where it passes itself off as Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel finds as follows with respect to the matters at issue herein.
According to the Complaint, Branson Ultrasonics Corporation (the “Branson Corporation”) registered its BRANSON mark with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 168788) on December 30, 1982. The SAIC record submitted as part of Amended Complaint Exhibit A confirms December 30, 1982 as the registration date for the mark but does not name the Branson Corporation. According to the Amended Complaint, Complainant acquired the Branson Corporation and its rights in the BRANSON mark in 1984, and the SAIC record shows Complainant as the registered owner of the mark. Also, Complainant registered the BRANSON mark in its own name with the SAIC (Reg. No. 16820774A) on April 23, 1985 (See, Amended Complaint Exhibit A). Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (“Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s Domain Name is identical or confusingly similar to Complainant’s BRANSON mark. It incorporates the mark in its entirety, altering it only by a one-letter misspelling which exchanges the “o” for a “d,” and adding the gTLD “.com.” Misspelling a mark, either by adding or removing letters, and adding a gTLD fails to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’), Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the BRANSON mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Name, (ii) it is not commonly known by the Domain Name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to pass oneself off as a complainant cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to information furnished to The Forum by the registrar of the Domain Name, the registrant is “Cai Jian Lin,” and the registrant organization is listed as “Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its BRANSON mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Amended Complaint Exhibit C is a screenshot of the web site resolving from the Domain Name. Amended Complaint Exhibit E is a screenshot of the web site located at <emerson.com> used by Complainant to market its BRANSON products. Both web pages feature the BRANSON mark written in similar font and display color bars and tabs in the same shade of green. They feature photos of the same or similar pieces of equipment, and Respondent’s web site displays numerous photos of various types of equipment carrying the BRANSON brand being offered for sale. Respondent’s web site mimics the look and feel of Complainant’s web pages. There is no question that this web site represents itself as being that of Complainant, or at a minimum being that of an authorized affiliate or representative of Complainant. Respondent is clearly passing itself off as Complainant. Using a disputed domain name to mimic or pass off as a Complainant for commercial gain does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent’s use of the Domain Name as described above, is clearly an attempt by it to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site and fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). 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).”).
Further, it is evident that Respondent registered the Domain Name because it contains Complainant’s mark with a subtle misspelling that would likely not be noticed by and deceive Internet users who mistakenly type the incorrect spelling of Complainant’s name into believing that they had reached Complainant’s web site. This practice is known as “typosquatting.” The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and typosquatting has, in and of itself been held to be evidence of bad faith registration and use. Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”).
Finally, it is evident from Complainant’s world-wide standing in the electronics equipment industry, and the close similarity between Complainant’s mark and web site on the one hand and Respondent’s Domain Name and web site on the other that Respondent had actual knowledge of Complainant’s BRANSON mark on September 4, 2017, when it registered the Domain Name. See, Amended Complaint Exhibit B for registration date. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bransdn.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 31, 2018
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