Emerson Electric Co. v. sho yi
Claim Number: FA1509001638590
Complainant is Emerson Electric Co. (“Complainant”), Missouri, United States. Respondent is sho yi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emerson.co>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 18, 2015; the Forum received payment on September 18, 2015.
On September 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emerson.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@emerson.co. Also on September 21, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <emerson.co> domain name is identical to Complainant’s EMERSON mark.
2. Respondent does not have any rights or legitimate interests in the <emerson.co> domain name.
3. Respondent registered and uses the <emerson.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the EMERSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 111,931, registered August 15, 1916). Complainant is a technology company with approximately 115,000 employees and 220 manufacturing locations worldwide.
Respondent registered the <emerson.co> domain name on September 8, 2013. The disputed domain name formerly redirected Internet users to a website featuring links to third-party websites, some of which directly competed with Complainant. The disputed domain name currently resolves to a blank page and is being offered for sale in an amount that exceeds Respondent’s out-of-pocket expenses.
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.”).
The Panel finds that Complainant’s registration of the EMERSON mark with the USPTO demonstrate rights under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <emerson.co> domain name is confusingly similar to Complainant’s mark as it merely adds the ccTLD “.co.” Previous panels have held that the affixation of a ccTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Thus, the Panel finds that Respondent’s <emerson.co> domain name is confusingly similar to Complainant’s EMERSON mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name and is not commonly known by the disputed domain name. Complainant states that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information lists “sho yi” as registrant of the disputed domain name. Respondent has failed to submit any evidence for the Panel’s consideration. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Complainant argues that Respondent’s disputed domain formerly redirected Internet users to a website featuring links to third-party websites, some of which directly competed with Complainant. The Panel notes that Respondent’s disputed domain name currently resolves to a blank page and lacks content, and is being offered for sale in an amount that exceeds Respondent’s out-of-pocket expenses. Past panels have concluded that there is no bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent’s disputed domain name either resolves to a website that displays links to products and services that compete directly with a complainant’s business, or to an inactive site. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Past panels have also concluded that a respondent had no rights or legitimate interests in a domain name where a respondent made an offer to sell its domain name registration for more than its out-of-pocket costs. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name). Accordingly, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith by offering to sell the disputed domain name for valuable consideration in excess of his out-of-pocket expenses. The Panel notes a screenshot of Respondent’s offer to sell the disputed domain name for $7,800.00. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(i) where a respondent offered a domain name for sale for consideration in excess of any out-of-pocket costs. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website by featuring links to third-party websites, some of which directly competed with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that hosted links to third party websites that offered products and services that competed directly with the complainant’s business. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Accordingly, the Panel finds that Respondent demonstrated bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent is engaged in the tactic of typosquatting by dropping the “m” from the “.com” of Complainant’s domain name, thereby capitalizing on a slight misspelling. Past panels have found bad faith pursuant to Policy ¶ 4(a)(iii) where a respondent’s domain name was merely a misspelling of a complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel finds that Respondent has demonstrated further bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent currently fails to make an active use of the disputed domain name. Past panels have found bad faith registration and use under Policy ¶ 4(a)(iii) where a respondent failed to make any active use of the disputed domain name. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel thus finds additional bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, demonstrated by Respondent’s initial use of the disputed domain name to display links to products and services that compete directly with Complainant. The Panel agrees and finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii). See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emerson.co> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 22, 2015
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