Ontel Products Corporation v. chen jinjun
Claim Number: FA1809001806512
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is chen jinjun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iarcticair.com>, registered with GoDaddy.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2018; the Forum received payment on September 18, 2018.
On September 18, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <iarcticair.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2018 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@iarcticair.com. Also on September 19, 2018, 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 October 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a producer of consumer goods, including the Arctic Air personal air cooler. Complainant claims rights in the ARCTIC AIR mark based upon its pending trademark applications with trademark agencies around the world, including its US application filed on October 13, 2017. The mark was registered with the World Intellectual Property Organization (“WIPO”) on March 5, 2018, Reg. No. 1408148.
Complainant alleges that the disputed domain name is confusingly similar to its mark because the domain name includes the entire ARCTIC AIR plus the letter “i.”
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to a website featuring unauthorized listings for Complainant’s products.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website. Furthermore, Respondent uses the disputed domain name to offer Complainant’s products without authorization from Complainant to do so.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark ARCTIC AIR and uses it to market consumer goods, including the Arctic Air personal air cooler.
Complainant’s rights in its mark date back to March 5, 2018.
The disputed domain name was registered on June 26, 2018.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent uses the disputed domain name to divert users to a website featuring unauthorized listings for Complainant’s products. The resolving website displays Complainant’s stylized ARCTIC AIR mark, as well as images related to Complainant’s business.
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 asserts rights in the ARCTIC AIR mark based upon its pending trademark applications with trademark agencies around the world. Pending trademark applications generally do not establish rights in a mark under Policy ¶ 4(a)(i). See Imagine Nation Books Ltd. v LEE, LAWRENCE, FA 1662128 (Forum Mar. 31, 2016) (“Complainant’s only assertion of rights in the mark stem from a trademark application and the statement that Complainant offers ‘services and goods under the name Collective Goods’… [and] pending trademark applications do not establish rights in a mark under Policy ¶ 4(a)(i).”). However, Complainant provides a copy of its registration of the ARCTIC AIR mark with the World Intellectual Property Organization (“WIPO”), Reg. No. 1408148, registered March 5, 2018. Registration of a mark with WIPO generally establishes rights in a mark under Policy ¶ 4(a)(i). See Air France - KLM v. Xiaoguang Jiang / Future iService LLC, FA 1774659 (Forum Apr. 11, 2018) (finding the complainant established rights in its AIR FRANCE KLM mark through submission of evidence of its registration of the mark with the World Intellectual Property Organization (“WIPO”)). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i), and that its rights date back to at least March 5, 2018.
The disputed domain name is confusingly similar to Complainant’s mark because it includes the entire ARCTIC AIR mark in the domain name plus the letter “i.” The addition of a single letter is generally insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015) (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not authorized or permitted to use Complainant’s ARCTIC AIR mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its’ marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS of record identifies Respondent as “chen jinjun,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way. Accordingly, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain name to pass itself off as Complainant in order to sell unauthorized products. Use of a disputed domain name to pass off as a complainant and sell unauthorized products may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Andersen Corp. v. Design Price Buy Inc., FA1261838 (Forum June 16, 2009) (finding that respondent’s attempt to pass itself off as an authorized distributor of complainant’s products did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain). Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name in an attempt to sell Complainant’s products. Use of a disputed domain name to sell unauthorized products of complainant may be evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Accordingly, the Panel finds that Respondent uses the disputed domain name to sell Complainant’s products therefore supporting the allegation that Respondent is acting in bad faith per Policy ¶ 4(b)(iv).
Further, again as already noted, Respondent attempts pass off as Complainant in order to disrupt Complainant’s business and attract, for commercial gain, users to Respondent’s website. Use of a disputed domain name to disrupt complainant’s business by passing off as complainant for commercial gain may support a finding of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore, the Panel finds that Respondent attempts to disrupt Complainant’s business and attract users for commercial gain, and therefore registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website features Complainant’s stylized ARCTIC AIR mark, as well as images related to Complainant’s business. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <iarcticair.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 16, 2018
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