Hardy Diesel & Equipment Inc. v China Diesel Generators
Claim Number: FA0102000096636
The Complainant is Hardy Diesel & Equipment Inc., Jamul, CA, USA ("Complainant") represented by Eric J. Prosser, of Peterson & Price. The Respondent is China Diesel Generators, Bergman, AR, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "chinadiesel.net" registered with Network Solutions.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 12, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.
On February 14, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "chinadiesel.net" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 February 15, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 7, 2001 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 20, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.
Respondent submitted a late Response along with a Petition for Consideration of Response on March 19, 2001, twelve days after the Response deadline set by the Rules. On March 20, 2001 Respondent made an additional submission that was not in compliance with the Forum’s Supplemental Rule 7. All documents were forwarded to the Administrative Panel (the "Panel") for action and for a determination on admissibility under Rule 10 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules").
Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Rule 2(a) "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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant alleges the following:
This Panelist finds that the Forum made six separate efforts to give Respondent actual notice of this proceeding through the Commencement Notice using the e-mail, facsimile and U.S. postal addresses listed by Respondent with Network Solutions. Respondent has not submitted a timely response in this matter.
Complainant, Hardy Diesel & Equipment Inc., owns the registered mark CHINA DIESEL, which it has used continuously since 1979 in connection with the sale of various diesel machinery imported from China. Complainant also maintains a registration for the domain name "chinadiesel.com" and has used its web site to sell and market, among other things, diesel generators and diesel powered tractors.
Respondent, David Hall d.b.a. China Diesel Generators, is Complainant’s former customer. Respondent registered its domain name three years after Complainant registered its domain name. Currently, Respondent offers products that are identical to Complainant’s via the disputed domain name. On September 1, 1999, Complainant sent Respondent a Cease and Desist letter, to no avail. On October 6, 1999, Respondent spoke with Complainant’s counsel via telephone and agreed it would change its domain name to the generic phrase "Chinese Diesel." To date, Respondent has failed to comply with the proposed agreement.
The Panel considered the Petition for Consideration of Response submitted by Respondent and found it to be without merit under the circumstances.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant’s rights are evidenced by its registered mark, CHINA DIESEL. Respondent’s domain name, chinadiesel.net, is identical to Complainant’s well-established mark. See American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks); Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the Complainant’s famous NIKE mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Although Respondent’s company name is consistent with the disputed domain name, there is no evidence to support Respondent’s rights. Accordingly, Respondent is not authorized or licensed to use Complainant’s mark, which Complainant has used in commerce since 1979. See AT&T Corp. v. Domains by Brian Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate interests where Respondent does not provide any documentation on the existence of its company, that might show what the company’s business was or years of existence, to counter Complainant’s trademark claims); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services").
In addition, Respondent asserted no rights or legitimate interests in the disputed domain name, which entitles the Panel to conclude it has no such rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Consequently, the Panel finds that Policy ¶ 4(a)(ii) has been sufficiently satisfied.
Registration and Use in Bad Faith
It is apparent that Respondent’s use of the disputed domain name is to intentionally attract Internet users to its web site, strictly for commercial gain, via a likelihood of confusion with Complainant’s well-established mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s web site).
Moreover, since Respondent was Complainant’s former customer, it had to have been aware of Complainant’s mark prior to registering the disputed domain name. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue"); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.
Accordingly, it is Ordered that the domain name, chinadiesel.net, be transferred from Respondent to Complainant.
Hon. James A. Carmody, Panelist
Dated: March 27, 2001
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