American Acoustic Development, LLC v. Guo Shu Ting
Claim Number: FA0607000755072
Complainant is American Acoustic Development, LLC (“Complainant”), represented by Kevin L. Klug, 11237 Concord Village Avenue, St. Louis, MO 63123-6903. Respondent is Guo Shu Ting (“Respondent”), XinHua Industrial District, Hua Fa Road Gui Zhou, Shnde, GuangDong 528305, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aadaudio.com>, registered with Xin Net 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 National Arbitration Forum electronically on July 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2006. The Complaint was submitted in both Chinese and English.
On July 25, 2006, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <aadaudio.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 2, 2006, a Chinese Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 22, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@aadaudio.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aadaudio.com> domain name is confusingly similar to Complainant’s AAD mark.
2. Respondent does not have any rights or legitimate interests in the <aadaudio.com> domain name.
3. Respondent registered and used the <aadaudio.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Acoustic Development, LLC, is a
manufacturer and seller of high-quality audio equipment. Complainant began using its AAD mark in July
2002, and holds a registration with the United States Patent and Trademark
Office (“USPTO”) for the AAD mark (Reg. No. 3,067,621, issued March 14, 2006,
filed May September 2, 2004). Additionally, Complainant operates a website at
<aadsound.com>.
Respondent registered the <aadaudio.com> domain name on May 18, 2004. Respondent’s disputed domain name resolves to a website that displays non-authentic copies of Complainant’s goods that are for sale by Respondent.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant is not required to own a trademark registration
to establish rights in the AAD mark under Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist).
Complainant has established common law rights in the AAD mark through continuous and extensive use of the mark in connection with its audio business since 2002. Complainant has promoted its products and services under the mark for several years, and holds a registration with the USPTO for this mark. The USPTO official registration additionally recognizes Complainant’s first use of the mark in commerce as July 2002. Complainant also operates a website at the <aadsound.com> website. Therefore, Complainant’s AAD mark has acquired secondary meaning sufficient to establish common law rights in the mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Respondent’s <aadaudio.com> domain name is confusingly similar to Complainant’s AAD mark under Policy ¶ 4(a)(i) as it combines Complainant’s mark in its entirety with a related term, “audio.” In Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001), the panel found that the <hoylecasino.net> domain name was confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, did not take the disputed domain name out of the realm of confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <aadaudio.com> domain name. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests).
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <aadaudio.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use Complainant’s ADD mark and that Respondent is not associated with Complainant in any way. Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name. There is also no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003), the panel found that without demonstrable evidence to support the assertion that a respondent was commonly known by a domain name, that assertion must be rejected. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Consequently, the Panel finds that Respondent is not commonly known by the <aadaudio.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent’s disputed domain name resolves to
a website that displays what is advertised to be Complainant’s products, but is
actually copies of Complainant’s products.
The Panel finds that the confusingly similar domain name is being used
by Respondent in an attempt to profit from the good-will associated with
Complainant’s products, and thus is neither a bona fide offering of
goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair
offering under Policy ¶ 4(c)(iii). See
G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002)
(finding that because the respondent is using the infringing domain name to
sell prescription drugs, the panel could infer that the respondent is using the
complainant’s mark to attract Internet users to its website for commercial
benefit); see also Hewlett-Packard Co. v.
Inversiones HP Milenium C.A., FA 105775
(Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar
domain name [<hpmilenium.com>] to sell counterfeit versions of
Complainant’s [HP] products is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i).”).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
Respondent has registered and is using the <aadaudio.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain name resolves to a website that markets copies of Complainant’s products, under Complainant’s mark, for the commercial benefit of Respondent. The disputed domain name is capable of creating confusion as to the source and affiliation of Complainant to the website, which the Panel finds to be the intention of Respondent based on the uncontested evidence presented in this case. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Moreover, the Panel finds that Respondent’s use of the
disputed domain name to operate a website that sells products that compete with
those offered by Complainant constitutes disruption and is additional evidence
of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent
registered the domain name in question to disrupt the business of the
complainant, a competitor of the respondent);
see also SR Motorsports v.
Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aadaudio.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 11, 2006
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