Micro Motion, Inc. v. yanpu xu / xu yanpu
Claim Number: FA1506001625556
Complainant is Micro Motion, Inc. (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is yanpu xu / xu yanpu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cnmicromotion.com>, registered with HiChina Zhicheng Technology Limited (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 Forum electronically on June 22, 2015; the Forum received payment on June 22, 2015. The Complaint was received in both Chinese and English.
On June 24, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the Domain Name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. 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 July 6, 2015, the Forum served the Chinese and English language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 27, 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@cnmicromotion.com. Also on July 6, 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.
A timely Response in English and Chinese language was received and determined to be complete on July 27, 2015.
Complainant’s timely Additional Submission was received by the Forum on August 3, 2015.
On August 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes as Panelist.
Respondent’s timely Additional Submission was received by the Forum on August 9, 2015.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures and sells flow meters in the United States and throughout the world and is well-known within the liquid and gas flow and density measurement industry as a manufacturer of these products. As early as 1977, Complainant began manufacturing and selling flow meters under the MICRO MOTION trademark (the “Trademark”). Complainant owns trademark registrations in the United States and throughout the world for the Trademark for flow meters and other goods. Complainant also owns the trademark 高准 (“Gao Zhun”) in China for flow meters and related goods.
Complainant’s United States trademark registration for the Trademark (U.S. Reg. No. 1,151,542) was registered on April 21, 1981, and the Trademark was first used in commerce on October 31, 1977.
The Domain Name is confusingly similar to the Trademark. It incorporates the Trademark in its entirety and adds an abbreviated term “CN.”
Respondent has no trademark or intellectual property rights in the Domain Name.
Respondent is not and has never been a licensee of Complainant.
There is no evidence that Respondent has, as a business or other organization, been commonly known by the Domain Name, or that the Domain Name is Respondent’s legal name.
Respondent has never made any 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. Respondent’s sole purpose in registering and using the Domain Name is to trade on the recognition of the Trademark and to deliberately increase Internet traffic to its website located at <cnmicromotion.com> (“Respondent’s Website”), which has no relation to Complainant.
Respondent’s Website has, without authorisation, used Complainant’s Trademark, Complainant’s MICRO MOTION and circular device logo trademark, and Complainant’s 高准 (“Gao Zhun”) trademark. Respondent is using the Domain Name to increase traffic to Respondent’s Website and to benefit
economically from the increased traffic. Respondent’s Website features also use of pictures and information about products offered by Complainant and its competitors. There is no relationship between Complainant and Respondent which would entitle Respondent to use Complainant’s marks, product images and information.
Respondent does not appear to actually be offering the goods or services at issue. Respondent’s website lists Complainant’s trademarks, trademarks belonging to Complainant’s affiliated companies, and trademarks of Complainant’s competitors and links to web pages showing pictures of products, but does not provide product pricing. There is no option to purchase products from Respondent’s website. Even if Respondent is actually selling
products, such products are outside Complainant’s authorized distribution chain as Respondent is not authorized to sell Complainant’s products. Second, Respondent does not accurately disclose its relationship with the trademark owner. Respondent is using Complainant’s marks on Respondent’s Website, without authorization, causing the impression that it is affiliated with Complainant. Nowhere on Respondent’s Website does Respondent address its relationship
with Complainant.
Respondent is also not making any legitimate noncommercial or fair use of the Domain Name.
Respondent’s registration and use of the Domain Name was and is in bad faith because:
1. Respondent purposefully created likelihood of confusion as to the source,
sponsorship, affiliation or endorsement of Respondent’s Website through the use of Complainant’s marks to attract Internet users to its site for commercial gain
to its commercial website;
2. Given that Respondent has used Complainant’s registered Logo trademark, the name of its parent company, Emerson Process Management, and the高准 (“Gao Zhun”) mark, on Respondent’s Website, it is clear that Respondent was aware of Complainant’s marks when it registered the Domain Name, subsequent to the dates of registration of such marks, and that Respondent had notice of Complainant’s rights and chose the Domain Name based on the goodwill that Complainant had acquired in its Trademark;
3. Customers seeking information online from Complainant are likely to be misled and diverted to Respondent’s Website. The Domain Name creates a disruption of Complainant’s business and diverts Internet users seeking Complainant’s services to Respondent. Complainant’s business is disrupted and diminished because Complainant’s customers may reach Respondent’s Website, find it not fully functional for purchasing products, become frustrated in their Internet search, and stop searching for information about Complainant and its products before ever reaching Complainant’s actual website.
B. Respondent
The Domain Name is not confusingly similar to the Trademark:
a. Complainant’s Trademark is composed of two words “ micro” and motion, each of which have its meanings, while the Domain Name is composed of thirteen letters ,C-n-m-ic-r-o-m-o-t-i-o-n, as a whole , which wouldn’t be the same Domain Name if the thirteen letters are not separated and made into different combinations. It is obvious the Domain Name is different from the Trademark;
b. The Domain Name can’t be separated and made into any form of combinations including cn (place) +micro motion (suggested by Complainant), c+nmicromotion and cnmicromot+ion etc. The combination, cn+micro motion, is only one kind of thousands of combinations and therefore it isn’t confusingly similar to the Trademark. Respondent has searched the China Trademark Registration Authority Index online and found that the trademarks composed of the thirteen letters such as cn+micromot+ion have been registered by many different entities. Complainant could have infringed the trademark rights of other entities in accordance with Complainant’s statements and allegations. In order to maintain the social order, many things could not be separated randomly and spontaneously such as the Domain Name hereof. Therefore, the relevant cases presented thereof are not applicable to this case;
c. Many legal entities have registered the trademarks “micro motion” in China, for example, Lusuo (British Virgin Islands Business Company) Co., Ltd. registered the trademark “ micro motion” on August 25, 2008 (Reg.No. 4,238,418), Huizhou Baihong Weidong Technology Co., Ltd. registered it as a trademark on July 7, 2008 (Reg. No. 6,824,956), Weidong Technology (Hangzhou) Co., Ltd. registered it as a trademark (Reg. No. 11,899,980). Therefore, Complainant doesn’t hold the sole ownership of “micro motion”. It would infringe upon rights of other entities if it’s deemed that Complianant holds the sole ownership of the composition of letters “micro motion” as a trademark;
d. The Trademark is a mark that differentiates commodities or services visually, while the Domain Name is for online searches which is impossible to cause any visual confusion;
e.
When Respondent searches “Cnmicromotion.com,” it’s directly linked to the
Chinese webpage of Respondent’s Company “Xian Gaozhun Mechanical Co., Ltd.” and
when it searches <http://www2.emersonprocess.com/>, it’s directly linked
to the English webpage. Therefore, there is no evidence that the Domain Name is
confusingly similar to Complainants’ Domain Name.
Respondent has legal rights through continuous use and holding of the Domain Name:
a. Respondent isn’t offering products or services at issue as stated by Complainant. Respondent’s Website only uses pictures and information of products such as functions and principles of operation offered by Complainant and other competitors for noncommercial purposes. For the statement “The Respondent does not accurately disclose its relationship with the trademark
owner”, Respondent does not need to do such an act as Respondent does not have any intention or behavior to offer the goods or services at issue but to provide information about the products from Complainant and other competitors for noncommercial purposes. Besides, the manufacturers and place of production have also been noted on the webpage;
b. The statement “Respondent is using Complainant’s MICRO MOTION Marks in the Domain Name solely to increase traffic to Respondent’s Website and, presumably, to benefit economically from the increased traffic” is invalid, as there is no evidence to prove that Respondent’s Website has increased or Respondent has benefited economically from it or is reselling Complainant’s branded goods. Therefore, Respondent has the legal rights through continuous use of the Domain Name for noncommercial purposes;
c. Respondent only uses the Domain Name to display pictures and information of products instead of reselling Complainant’s branded goods for noncommercial purposes. There is no evidence that Respondent has caused any damage to Complainant’s interests. Therefore, Respondent is using the Domain Name fairly.
Under these circumstances, Respondent has valid rights and legitimate interests in the Domain Name under UDRP 4 (c) (iii).
Respondent did not register or is not using the Domain Name in bad faith:
a. Respondent uses the Domain Name for noncommercial purposes instead of for commercial gain; there is no evidence that Respondent has caused confusion to users; there is no evidence that Respondent has made commercial gains by attracting users to Respondent’s Website;
b. Respondent has never used Complainant’s marks for commercial gain instead of offering information and pictures of products of Complainant for noncommercial purposes. Respondent registered the Domain Name in January 2015 before the dates of displaying information and pictures of products on Respondent’s Website;
c. There is no evidence that Complainant’s business is disrupted and diminished because Complainant’s customers reach Respondent’s Website, find it not fully functional for purchasing products, become frustrated in their Internet search, and stop searching for information about Complainant and its products before ever reaching Complainant’s actual website. Respondent’s Website isn’t reselling any products or offering services which is impossible to influence Complainant’s sales of products. Respondent’s website is in Chinese for Chinese people and Complainant’s website is in English. There is essential difference which is impossible to cause misleading or confusion to customers.
Complainant’s malicious acts amount to reverse domain name hijacking. It is obvious that the Domain Name is different from Complainant’s Trademark and
Respondent’s business type is also totally different from Complainant’s. Besides, Complainant is not the sole owner of the trademark “micro motion” as there are more than three entities which have registered it as a trademark in China. It would be unfair to Respondent and other entities who register trademarks or domain names including the letters “micro motion” if Complainant is deemed to be the sole owner.
Whereas Complainant currently lives in China, the Domain Name was registered in China, and Respondent’s Website is a Chinese website and the region of influence is in China, Respondent requests transfer of the proceeding to the Beijing Office of the Asian Domain Name Dispute Resolution Center.
C. Complainant’s Additional Submissions
Complainant maintains that the Domain Name is confusingly similar to the Trademark. The average Internet user would be likely to separate out the geographic indicator “CN” from the rest of the Domain Name.
The trademarks cited by Respondent from the Chinese Registry are not relevant to the determination of whether the Domain Name is confusingly similar to Complainant’s Trademark.
Chinese consumers seeking Complainant’s products would likely be directed to Complainant’s domains, micromotion.com.cn and micromotion.cn, which is a
website in Chinese that bears Complainant’s Trademark and the 高准 (“Gao Zhun”) trademark. Respondent admits that a search of “cnmicromotion.com” would direct consumers to a Chinese website bearing the “Gao Zhun” name. Accordingly, the use of Complainant’s marks by Respondent and Respondent’s affiliate would be likely to cause consumer confusion.
Respondent has copied images and product information of at least Emerson’s Rosemount products and is also using the Emerson name and product images for the “475 Field Communicator” product. The copied images are readily available on Emerson’s websites. Respondent has listed these products under its “import products” listing, suggesting to consumers that it distributes authentic goods made by Emerson. One of the brands prominently featured on Emerson’s website is the Trademark, where the MICRO MOTION logo mark is prominently displayed. By virtue of Respondent copying product images and the MICRO MOTION logo from Emerson’s websites, Respondent must have been aware of
Complainant’s business and registered trademarks.
D. Respondent’s Additional Submissions
Respondent insists that the individual components of the Domain Name cannot be broken up and accordingly the Domain Name is not confusingly similar to the Trademark.
Respondent’s Website is non-profit and has no trading function. Respondent presented all products therein as a public presentation. There is no evidence that Respondent has use the Domain Name to obtain economic benefits. The link to "imported products" just shows that the products are not produced in China, without any commercial purpose.
As Respondent is a resident of China, the Domain Name was registered in China, the registrar is in China, and the sphere of influence of Respondent’s Website is mainly China, Respondent repeats its request for transfer of this proceeding to the Beijing Office of the Asian Domain Name Dispute Resolution Center.
Complainant has established all the elements entitling it to transfer of the Domain Name.
1. Language of the Proceeding
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, Respondent having filed the Response in both English and Chinese, determines that the remainder of the proceeding may be conducted in English.
2. 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 Panel finds that Complainant has rights in the Trademark acquired through use and registration, which incidentally predate the date of registration of the Domain Name by almost 40 years.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name”.
The Domain Name contains the Trademark in its entirety.
The Panel finds the addition of the generic and descriptive suffix “cn” (a commonly used abbreviation and geographic indicator for China) does not serve to distinguish the Domain Name from the Trademark in any significant way.
Whether any third parties have registered trademarks in China or elsewhere that may or may not be similar to the Trademark is entirely irrelevant for the purposes of paragraph 4(a) of the Policy.
The Panel therefore finds that the Domain Name is confusingly similar to the Trademark, and holds that Complainant has fulfilled 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 trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark 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 almost 40 years. 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 trade mark rights in respect of the Domain Name or that the Domain Name is used in connection with a bona fide offering of goods or services.
The Panel finds Respondent’s bald assertion that it is not making any commercial use of the Domain Name wholly unconvincing. The evidence clearly demonstrates that Respondent has registered the Domain Name and used Respondent’s Website, containing Complainant’s English and Chinese language word and device marks, and featuring images of some of the products of Complainant’s holding company, for the purpose of deliberately attracting Internet users to Respondent’s Website, which brazenly promotes the business of entities in China that are competitors of Complainant, and whose names contain Complainant’s Chinese language高准 (“Gao Zhun”) trademark.
Such use cannot possibly give rise to rights or legitimate interests in the Domain Name.
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 any legitimate noncommercial or fair use of the Domain Name.
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 Complainant has fulfilled the second condition of paragraph 4(a) of the Policy.
This is a clearcut case of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Respondent has registered the Domain Name and is blatantly infringing Complainant’s trademark rights, as well as the copyright images of its parent company, on Respondent’s Website, in order to intentionally cause confusion and attract Internet users to Respondent’s Website, in order to obtain commercial gain by promoting the goods and services of Respondent and of the entities featured on Respondent’s Website.
Whether or not Respondent’s Website is actively accepting product orders is immaterial.
The Panel has no hesitation in concluding Complainant has fulfilled the third condition of paragraph 4(a) of the Policy.
3. Reverse Domain Name Hijacking
Respondent’s bald assertion of reverse domain name hijacking is groundless and, in all the circumstances, scandalous. The Panel rejects Respondent’s request.
4. Request for Transfer to the ADNDRC
There are no grounds under the Policy, or otherwise, for transfer of pending UDRP proceedings to other providers. There is simply no basis for Respondent’s request, which is rejected.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cnmicromotion.com> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: August 13, 2015
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