A.T.X. International, Inc. v. ku qi Wu / Ku qi
Claim Number: FA1505001620461
Complainant is A.T.X. International, Inc. (“Complainant”), represented by Lawrence R. Robins of Sullivan & Worcester LLP, Massachusetts, USA. Respondent is ku qi Wu / Ku qi (“Respondent”), Peoples’ Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stylocrosspascher.com>, registered with HiChina Zhicheng Technology Limited.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 20, 2015. The Complaint was submitted in both Chinese and English.
On May 21, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <stylocrosspascher.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 May 28, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 17, 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@stylocrosspascher.com. Also on May 28, 2015, the Chinese language 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 June 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant has registered the CROSS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 526,855, registered June 27, 1950, renewal approved June 21, 1990). Complainant uses the CROSS mark in connection with its business in the production and sale of writing utensils and accessories. Respondent’s <stylocrosspascher.com> domain name is confusingly similar to the CROSS mark as it features the French words “Stylo” and “Pas Cher” which translates in the entire domain name to read “cheap Cross pen” in English. See Compl., at Attached Annex 6 (translation). While Respondent has added generic/descriptive terms to the CROSS mark as well as the “.com” generic top-level domain (“gTLD”) suffix, it is therefore confusingly similar to the mark.
(ii) Respondent has no rights or legitimate interests in the <stylocrosspascher.com> domain name. Respondent is not, nor has it ever been commonly known by the disputed domain name. Additionally, Respondent has not been granted any authorization from Complainant to register the CROSS mark in connection with any domain name registrations. There is also absent any bona fide offering of goods or services or any legitimate noncommercial or fair use evinced through Respondent’s use of the <stylocrosspascher.com> domain name. Instead, Respondent purportedly sells competing and likely counterfeit products of Complainant’s.
(iii) Respondent has registered and used the <stylocrosspascher.com> domain name in bad faith. As per Complainant’s Attached Annex 7, Respondent’s attempts to sell competing with products which are presumably counterfeit versions of Complainant’s constitutes a bad faith disruption under Policy ¶ 4(b)(iii). Next, as Respondent likely profits from its attempts to offer such products, it has demonstrated Policy ¶ 4(b)(iv) as per the language of the policy: “creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.” Finally, Respondent’s actual knowledge of the CROSS mark demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a response. The <stylocrosspascher.com> domain name was registered on July 3, 2014.
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.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 has purportedly registered the CROSS mark with the USPTO (e.g., Reg. No. 526,855, registered June 27, 1950, renewal approved June 21, 1990). Complainant uses the CROSS mark in connection with its business in the production and sale of writing utensils and accessories and argues that its trademark registration demonstrates its Policy ¶ 4(a)(i) rights. There is a consensus amongst panels that, regardless of geographic location of a respective complainant and respondent, a trademark registration with a governmental authority satisfies a complainant’s burden under Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has rights in the CROSS mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <stylocrosspascher.com> domain name is confusingly similar to the CROSS mark as it features the French words “Stylo” and “Pas Cher” which translates in the entire domain name to read “cheap Cross pen” in English. See Compl., at Attached Annex 6 (translation). As Respondent has simply added generic/descriptive terms to the CROSS mark as well as the “.com” gTLD suffix, the Panel finds that it is confusingly similar to the mark. Previous panels have found such additions as insufficient in overcoming a finding of confusing similarity per Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, this Panel concludes that the disputed domain name does not constitute a distinguishing domain registration; rather, it is confusingly similar to the CROSS mark per 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 contends that Respondent has no rights or legitimate interests in the <stylocrosspascher.com> domain name. Complainant asserts Respondent is not, nor has it ever been commonly known by the disputed domain name. Additionally, Respondent has not been granted any authorization from Complainant to register the CROSS mark in connection with any domain name registrations. In light of the relevant WHOIS information and Respondent’s failure to submit affirmative evidence to the record for the Panel’s consideration, there may be no basis found in declaring Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent has made no bona fide offering of goods or services or any legitimate noncommercial or fair use evinced through Respondent’s use of the <stylocrosspascher.com> domain name as Respondent purportedly sells competing and likely counterfeit products of Complainant’s. See Compl., at Attached Annex 7 (disputed domain name’s resolving page). The Panel agrees that Respondent’s offerings infringe on Complainant’s legitimate business purposes and finds Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Complainant alleges that, as per Complainant’s Attached Annex 7, Respondent’s attempts to sell competing products which are presumably counterfeit versions of Complainant’s constitute a bad faith disruption under Policy ¶ 4(b)(iii). Panels have agreed with Complainant’s assertion and found respondents’ direct competition via presumably counterfeit goods evinces bad faith registration and use. 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 [as per Policy ¶ 4(b)(iii)] by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). The Panel therefore finds Respondent has disrupted Complainant’s business in bad faith per Policy ¶ 4(b)(iii).
Next, as Respondent likely profits from its attempts to offer such products, Complainant argues it has demonstrated Policy ¶ 4(b)(iv) bad faith as per the language of the policy: “creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.” The Panel recalls that the <stylocrosspascher.com> domain name’s resolving page is attached at Annex 7 to the Complaint. Previous panels have found where a confusingly similar domain name was registered by a respondent which attempted to conduct business which interfered with a complainant’s legitimate business, bad faith under Policy ¶ 4(b)(iv) was evidenced. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). As Respondent presumably profits from the confusion associated with the <stylocrosspascher.com> domain name, the Panel agrees that Respondent has demonstrated bad faith registration and use as per the language of Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had actual knowledge of Complainant's rights in the CROSS mark. Complainant argues that Respondent's offering of Complainant's own products (potentially fake versions) and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees with Complainant and infers due to the Respondent’s use manner of the disputed domain name that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stylocrosspascher.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 30, 2015
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