Twin Disc, Incorporated v. CHEN SHUIYUAN / QUANZHOU TWINDISC TRADE DEVELOPMENT CO.,LTD.
Claim Number: FA1411001591281
Complainant is Twin Disc, Incorporated (“Complainant”), represented by Linda C. Emery of von Brisen and Roper, Wisconsin, USA. Respondent is CHEN SHUIYUAN / QUANZHOU TWINDISC TRADE DEVELOPMENT CO.,LTD. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twindisc.co>, registered with CCI REG S.A. (the “domain name”).
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.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2014; the National Arbitration Forum received payment on November 21, 2014. The Complaint was received in English and Chinese.
On November 21, 2014, CCI REG S.A. confirmed by e-mail to the National Arbitration Forum that the <twindisc.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. 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 December 2, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2014 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@twindisc.co. Also on December 2, 2014, 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.
A timely Response was received and determined to be complete on December 19, 2014.
On December 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes 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" 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 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a long-established international manufacturer and worldwide
distributor of heavy duty off-highway and marine power transmission equipment and related products. Complainant has been in business for 95 years, operating
under the name “Twin Disc”. Complainant is the owner of several registrations worldwide for the trademark “TWIN DISC” (the “Trademark”), including registrations in China dating from 2002. The earliest, USA, registration for the Trademark dates from 1969. Complainant has operated under the Trademark in the Chinese market since 1997 and has an exclusive distributor of its products sold under the Trademark in China.
The domain name is identical to the Trademark. It comprises the Trademark in its entirety.
Respondent no rights or legitimate interests in the domain name. It is being used in respect of a website (the “Website”) which reproduces Complainant’s distinctive logo Trademark and offers for sale products of Complainant’s competitors.
Accordingly, the domain name has been registered and is being used in bad faith.
B. Respondent
Respondent first saw Complainant’s USA registered logo Trademark many years ago, and liked the Trademark due to the meaning it conveyed.
As China is a “first to file” jurisdiction, Respondent, having noticed that the word version of the Trademark had not been registered in China, applied in December 2008 to register the word mark “TWIN DISC”, which application proceeded to registration in September 2010.
Respondent’s company is an importing company. The domain name is being used in respect of the Website to promote Respondent’s business in China, which will not affect Complainant’s business and Complainant’s rights in the Trademark in the USA.
Complainant has established all the elements entitling it to transfer of the Domain Name.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, the Respondent having filed the Response in both Chinese and English, and having also communicated with the National Arbitration Forum in English, the Panel determines that the remainder of the proceedings may be conducted in English.
Substantive Elements of the Policy
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.
The domain name is identical to the Trademark.
The Panel therefore finds that the domain name is confusingly similar to the Trademark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence that Complainant has authorised, licensed, or permitted Respondent to register or use the domain name or to use the Trademark. Complainant has prior rights in the Trademark which precede Respondent’s registration of the domain name by decades. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
Respondent has failed to show that it has acquired any legitimate trademark rights in respect of the domain name or that the domain name has been used in connection with a bona fide offering of goods or services. Respondent’s evidence is that, having noticed (and liked) Complainant’s logo Trademark, Respondent, having ascertained that the wording component of the Trademark had not yet been registered in China, opportunistically filed for registration of the word Trademark in 2008, 6 years after the dates of registration of Complainant’s Trademark in China, and almost 40 years after the Trademark was registered by the Complainant in the USA.
There has been no evidence adduced to show that Respondent has been commonly known by the domain name.
There has been no evidence adduced to show that Respondent is making a legitimate non-commercial or fair use of the domain name.
The evidence shows the domain name has been used in respect of the Website, which features prominently, and without authorisation, Complainant’s logo Trademark and offers for sale products of competitors of Complainant. Such use cannot possibly give rise to rights or legitimate interests.
The evidence (including the Respondent’s evidence) clearly demonstrates that Respondent has opportunistically registered and used the domain name as part of a strategy of deliberately passing Respondent off as a distributor authorised, approved by or in some way affiliated with Complainant, contrary to the fact.
The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
The Panel has no hesitation in concluding that the domain name has been registered and used in bad faith, under paragraph 4(b)(iv) of the Policy, through the use of the domain name in respect of the Website, which features prominently Complainant’s logo Trademark without authorisation, and offers for sale products of Complainant’s competitors.
The Panel therefore concludes that the domain name has been registered and used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <twindisc.co> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: January 7, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page