Emerson Electric Co. v. Li Taiquan
Claim Number: FA1411001591474
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is Li Taiquan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonchina.com>, registered with 35 Technology Co., Ltd.
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 November 21, 2014; the National Arbitration Forum received payment on November 21, 2014. The Complaint was duly received in both English and in Chinese.
On November 25, 2014, 35 Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <emersonchina.com> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name. 35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology Co., Ltd. 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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2015 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@emersonchina.com. Also on January 13, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2015, 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" 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’s Contentions
1. Complainant uses the EMERSON mark to promote many products, including electric-motor fans for both industry and consumer use, other industrial machinery, and compressors for use in commercial and industrial appliances. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 111,931, registered Aug. 15, 1916). The <emersonchina.com> domain name takes the entire EMERSON mark and adds the term “china” and a gTLD. As such, this domain name is confusingly similar to the trademark.
2. Respondent has no rights or legitimate interests in the <emersonchina.com> domain name. Respondent is not commonly known by this <emersonchina.com> domain name and is not licensed or authorized to use the EMERSON mark in trade. Respondent has made no bona fide commercial offering and instead uses the EMERSON mark on the websites associated with the domain name whilst offering off the same kinds of goods sold under the EMERSON mark. See Compl., at Attached Ex. C.
3. Respondent’s registration and use of this <emersonchina.com> domain name has been in bad faith. Respondent is disrupting Complainant’s business by selling goods in contention with Complainant’s legitimate EMERSON products. Further, Respondent is keenly positioned to profit from Internet users who may be confused as to the source or origin of the goods sold on the <emersonchina.com> domain name’s website. Respondent had actual knowledge of Complainant’s rights in the EMERSON trademark prior to registering and using this <emersonchina.com> domain name.
B. Respondent’s Contentions
1. Respondent did not submit a response.
Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese.
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.
1. Respondent’s <emersonchina.com> domain name is confusingly similar to Complainant’s EMERSON mark.
2. Respondent does not have any rights or legitimate interests in the <emersonchina.com> domain name.
3. Respondent registered or used the <emersonchina.com > domain name in bad faith.
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(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.”).
Complainant claims that it uses the EMERSON mark to promote many products, including electric-motor fans for both industry and consumer use, other industrial machinery, and compressors for use in commercial and industrial appliances. Complainant shows how the mark has been registered with the USPTO (e.g., Reg. No. 111,931, registered Aug. 15, 1916). The Panel agrees that nearly a century of USPTO registration is surefire evidence of Policy ¶ 4(a)(i) rights in the EMERSON mark. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant goes on to argues that the <emersonchina.com> domain name takes the entire EMERSON mark and adds the term “china” and a gTLD. Complainant therefore concludes that this domain name is confusingly similar to the trademark. The Panel agrees that adding the geographic term “china” to the trademark does enhance the confusing similarity of the domain name. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). The Panel also agrees that the gTLD “.com” cannot be considered as adding any meaningful distinction to the trademark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, this Panel finds the <emersonchina.com> domain name is confusingly similar to the EMERSON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant believes that Respondent is not commonly known by this <emersonchina.com> domain name and is not licensed or authorized to use the EMERSON mark in trade. The Panel acknowledges that “Li Taiquan” is listed as the registrant of this domain name as indicated in the WHOIS annals. This Panel agrees that on the balance, there is no credible evidence to suggest that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent has made no bona fide commercial offering and instead uses the EMERSON mark on the websites associated with the domain name whilst offering off the same kinds of goods sold under the EMERSON mark. See Compl., at Attached Ex. C. In Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel found that the respondent had no bona fide offering when the domain name contained the complainant’s own trademarks and offered goods that were similar to, or counterfeits of, the legitimate merchandise. Here the Panel likewise finds that Respondent’s offerings give rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Registration and Use in Bad Faith
Complainant argues that Respondent is disrupting Complainant’s business by selling goods in contention with Complainant’s legitimate EMERSON products. The Panel again looks at Exhibit C to take note of how Respondent fronts a Chinese-language website that seems to promote goods under the EMERSON mark. This Panel agrees that such a sale of counterfeit merchandise is clearly indicative of a bad faith intent to disrupt Complainant’s business. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Complainant claims that Respondent is keenly positioned to profit from Internet users who may be confused as to the source or origin of the goods sold on the <emersonchina.com> domain name’s website. The Panel agrees that Respondent’s use of Complainant’s own EMERSON mark and logos in the solicitation of the goods seen in Complainant’s Exhibit C is indicative of an intent to profit from a likelihood of confusion in Policy ¶ 4(b)(iv) bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the EMERSON trademark prior to registering and using this <emersonchina.com> domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emersonchina.com> domain name be TRANSFERRED from Respondent to Complainant
John J. Upchurch
Dated: February 18, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page