NSK LTD. v. Zhang Bei / Shandong Huagong bearing CO., LTD.
Claim Number: FA1701001713800
Complainant is NSK LTD. (“Complainant”), represented by Jeffrey P. Thennisch of Lorenz & Kopf, LLP, Michigan, USA. Respondent is Zhang Bei / Shandong Huagong bearing CO., LTD. (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nsk-ntn-skf.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2017; the Forum received payment on January 23, 2017.
On January 25, 2017, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <nsk-ntn-skf.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 January 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2017 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@nsk-ntn-skf.com. Also on January 31, 2017, 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 March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Language Request
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request even in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which are particularly compelling are:
See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant to suggest the likely possibility Respondent is conversant and proficient in the English language due to Respondent’s high volume of Alibaba on-line sales. After considering the circumstance of the present case, the Panel decides the proceeding should be in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
As a threshold matter, Complainant acknowledges that the current Registrant/Registrar information indicates that the applicable Registration Agreement for the nsk-ntn-skf.com domain name at issue is in the Chinese language and thereby implicates the Forum’s translation provisions. Namely, the Registrant/Registrar information indicates that the named Registrant appears to be an individual residing in China and the applicable Registrar is also believed to be located in China. While Complainant asserts that the strength of the underlying claim and bad faith adoption of the nsk-ntn-skf.com domain name is clear, it is also desirous to ensure that Respondent is fully afforded all requisite due process protections. As such, it is submitted that Complainant can outline, present, and state a cogent and supportable rationale as to why the Registrant is fully capable of defending the present Complaint and proceeding in the English language without the need for any putative translation of any material into Chinese.
Most notably, as documented by Registrant’s own unmistakable English-language content on the site itself, Registrant utilizes the subject domain in the business of selling the unauthorized bearing products through the underlying site in English and through at least the Alibaba on-line sales portal, which expressly offers goods and transacts business in English as well as offers, sells, and targets consumers in numerous English-speaking nations including Australia, Canada, New Zealand, and the United States thereby demonstrating that Respondent itself has overtly taken action to avail itself to the benefits of commerce, revenues, and sales in English, thereby legitimately and reasonably invoking the same Registrant to any resulting burdens relating to its actions and conduct, in English. In the event that the Forum does not accept this argument to proceed in English, Complainant alternatively requests additional time to correct such deficiencies under FORUM Supplemental Rule 12(a) as a timely submission for withdrawal and/or reinstatement of the case within 30 calendar days.
1. OVERVIEW OF THE COMPLAINT
This Complaint is submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules), with an effective date of March 1, 2010, and the National Arbitration Forum (FORUM) Supplemental Rules (Supp. Rules). UDRP Rule 3(b)(i).
As more fully supported by the accompanying exhibits, the Complaint is legitimately and reasonably submitted to effectuate the transfer of the disputed domain name, nsk-ntn-skf.com, from Respondent to Complainant for the reason that Respondent has no legitimate rights in the domain name which comprises and depicts not only Complainant’s prior rights and registered mark, NSK, corresponding to the precise goods protected by Complainant’s registered trademarks, which are Complainant’s principal goods. Additionally, and significantly, each of the separate “NTN” and “SKF” components found in the nsk-ntn-skf.com domain name are also, in fact, registered trademark(s) of NTN Corporation and SKF USA, Inc., respectively, which are themselves third party, and wholly unrelated, business competitors of NSK – thereby demonstrating Respondent’s propensity to be an “equal opportunity” unlawful adopter of the rights of others. In short, the contested nsk-ntn-skf.com domain combines the registered marks of two separate, and wholly unrelated, bearing brands (i.e. SKF and NSK) not only to falsely suggest that there is some type of affiliation between NSK and Respondent, but also that there is some type of association between NSK and SKF which does not exist.
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
The active, enforceable, and existing registered mark(s) on which this Complaint is based is NSK, owned and used by Complainant since at least as early as May 2, 1927, and the subject matter of multiple incontestable trademark registrations before the U.S. Patent & Trademark Office and throughout the world. Most notably, Complainant is the owner/registrant of the issued, existing, and incontestable federal trademark registrations, all for the NSK mark:
· U.S. Reg. No. 857,857 issued on October 1, 1968 in International Classes 007 and 012;
· U.S. Reg. No. 948,244 issued on December 5, 1972 in International Class 007;
· U.S. Reg. No. 1,255,849 issued on November 1, 1983 in International Class 007;
· U.S. Reg. No. 1,475,644 issued on February 9, 1988 in International Class 007;
· U.S. Reg. No. 4,216,727 issued on October 2, 2012 in International Class 008; and
· U.S. Reg. No. 4,669,214 issued on January 13, 2015 in International Classes 004, 007, and 012.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
I. INTRODUCTION
Complainant, NSK LTD. (hereinafter “NSK” or “Complainant”) is the owner of the NSK mark for use in conjunction with a wide array of industrial, manufacturing, and automotive vehicle-related components, equipment, and parts. Without question, and as clearly documented in the issued and incontestable NSK trademark registrations, NSK is a global manufacturer and producer of bearing products for use in the manufacturing operations and goods of others ranging from industrial and machinery applications, to appliances and automotive products, through large mining operations and some of the largest industrial applications in the world, including the bearings used to operate the Panama Canal. The specific description and connection between the NSK mark and the registered goods consisting of “bearing” products in the respective goods clauses are explicitly highlighted in the trademark registrations.
Respondent, acting in bad faith, has only recently registered and commenced use registered of the domain name, nsk-ntn-skf.com, on February 24, 2016 for the wholly obvious, transparent, and unauthorized commercial purposes of explicitly offering, promoting, and selling directly competing/overlapping bearing products and industrial product applications through the nsk-ntn-skf.com domain name registration, but with clear knowledge that such activities are in direct violation of the pre-existing business, goodwill, and trademark registrations of Complainant. A sampling of the content found at nsk-ntn-skf.com clearly depict, offer, and propose commercial transactions be undertaken for the sale and shipment of bearing products and information, as well as on-line ordering and purchasing instructions for such goods. It is submitted that the nsk-ntn-skf.com site takes advantage of the Internet user’s mistaken arrival at the site by appearing to contain viable information regarding NSK’s bearing products, all under the confusingly similar designation nsk-ntn-skf.com, which fully comprises Complainant’s federally registered NSK mark in the United States and elsewhere. Here, the pre-existing and federally registered NSK mark(s) is/are confusingly similar to nsk-ntn-skf.com for purposes of any Lanham Act analysis under 15 U.S.C. §1114 and/or 15 U.S.C. §1125(a).
Clearly, the purpose of the NSK mark, owned and registered by Complainant, is to function as a source indicator for the very same type of bearing products previously provided (and federally registered) by Complainant. Respondent has no preexisting rights or legitimate interest in respect of said domain name, especially where the same Respondent only recently registered the subject domain name on February 24, 2016. As such, Respondent’s actions fall squarely within the activity ICANN’s Uniform Domain Name Dispute Resolution Policy (“ICANN Policy”) is intended to remedy. Of particular additional relevance in this proceeding involving the subject domain name, nsk-ntn-skf.com, is that BOTH the “NTN” and “SKF” components of the nsk-ntn-skf.com domain name were also specifically selected by this Respondent to refer to each of NTN and SKF, unrelated third party brands of competing bearing products, owned by NSK’s business competitor(s), NTN Corporation and SKF USA, Inc., respectively, which are unaffiliated with NSK – and each other. It is emphasized that Complainant has no relationship with Respondent (or the NTN or SKF trademark components) and has given no authorization to depict the NSK mark or NSK bearing products, or product packaging as part of the contested domain name.
Specifically, Complainant states that: (i) Respondent has no authorized business relationship with Complainant; (ii) Respondent is not an authorized distributor of Complainant’s goods; and (iii) Respondent is not a known “reseller” of Complainant’s goods and has no authority to warrant or represent Complainant’s bearing goods in any manner.
Indeed, Respondent’s own content fits a pattern of not only traditional trademark infringement and “passing off” involving the unauthorized use of the registered NSK trademark, but also at least arguable conduct where “Respondent’s website must be characterized as a ‘parking page’ from which Respondent seeks to achieve commercial gain through the pay-per- click ads; which in turn does not give rights or legitimate interests in the disputed domain name.” See BookIt.com, Inc. v. PrivacyProtect.org/ICS Inc., WIPO Case No. D2013-0775. This position is supported by Respondent’s own content which shows graphical, textual, and visual bearing products offered for sale (and through) the nsk-ntn-skf.com domain name, but which, Complainant affirmatively states, do not comprise or relate to the sale of legitimate bearings manufactured by NSK Ltd. Thus, in addition to the traditional trademark issues and rights relied upon herein, Complainant also makes a good faith showing that the purported sale of unknown and untested “NSK Bearings” is also a public safety concern.
Accordingly, the nsk-ntn-skf.com site takes advantage of the Internet user’s mistaken arrival at the site by appearing to contain viable information regarding NSK’s bearing products, all under the confusingly similar designation nsk-ntn-skf.com with the goal that the Internet user will then “purchase” NSK-branded “bearings” (i.e. the precise registered goods in the asserted incontestable federal trademark registrations) - even though - neither the nsk-ntn-skf.com site, nor any putative third party link set forth on the site, relate to the offering or sale of authorized or actual NSK bearing products. Here, Respondent utilizes the nsk-ntn-skf.com site content to display Complainant’s NSK mark for the purposes of effectuating a commercial transaction relating to NSK Bearings (i.e. Complainant’s core registered goods) from unknown and unauthorized sources of supply which also serves to legitimately and reasonably implicate public health and safety concerns in that bearing products are purchased by consumers for use in vehicles, including modes of public transportation.
As such, the federally registered NSK marks comprise and, indeed, exist to protect the overlapping and registered goods of bearings which is/are confusingly similar to the disputed nsk-ntn-skf.com domain name and its content for purposes of any Lanham Act analysis. Most notably, the function of the multiple NSK mark(s), owned and registered by Complainant, is to exist as an undisputable source indicator for the very same bearing products previously provided by Complainant, but which Respondent now attempts to traffic - in the context of the nsk-ntn-skf.com domain name - to sell the same underlying bearing products. Clearly, Respondent has no preexisting rights or legitimate interest in respect of said domain name and is certainly not an authorized agent or distributor of any of Complainant’s bearing products. Moreover, NSK further states that very legitimate and real consumer confusion and bad faith can be imputed from this Registrant’s intentional act of ALSO selecting and adding the “NTN” and “SKF” components to the domain name nsk-ntn-skf.com where each of NTN and SKF is/are registered trademarks of NSK’s business competitors, NTN Corporation and SKF USA, Inc. – and no such “joint” or other relationship exists between NSK and either of NTN or SKF. Respondent’s actions fall squarely within the activity ICANN’s Uniform Domain Name Dispute Resolution Policy (“ICANN Policy”) is intended to remedy.
II. FACTUAL BACKGROUND
A. The NSK Mark(s)
Complainant, NSK Ltd., is a Japanese corporation and global seller of bearing and industrial products to a wide array of industries, which maintains a United States business presence and address of 4200 Goss Road in Ann Arbor, Michigan 48105. For nearly a century, Complainant has owned and used the NSK mark with an equally wide array of industrial goods, specifically including bearings and related products, among other applications. Complainant operates and sells its products throughout the world employing at least 30,454 employees and generating annual revenues in excess of seven (7) billion dollars ($7,000,000,000) as measured in U.S. dollars in 2015. Complainant utilizes its NSK mark in the United States and throughout the world to promote, offer, and sell products and goods including the NSK marked goods set forth in the multiple issued U.S. trademark registrations for NSK.
Complainant has marketed and distributed its bearing and other goods under the NSK mark since at least as early as May 2, 1927. Complainant also offers and promotes its products via the Internet in connection with the NSK. For instance, Complainant’s English-language website, nskamericas.com, includes the heading “NSK is a global leader of roller bearings, ball bearings, linear motion and automotive components with domestic and overseas manufacturing capabilities.” It is submitted that Respondent has simply elected to create a wholly unauthorized domain name and online sales portal to attract unsuspecting consumers to purchase bearing products of unknown quality without the knowledge of the actual and legal trademark owner(s).
For purposes of this Compliant filed by NSK, the NSK mark is the subject of at least six stand-alone federal registrations before the U.S. Patent & Trademark Office as follows and relied upon herein:
· U.S. Reg. No. 857,857 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on October 1, 1968 in International Classes 007 and 012 for the following registered goods: Roller Bearing Inserts For Textile Spindles; Top Rollers And Bottom Rollers For Textile Spinning And Twisting Frames; Power Transmission Ball Screws For Converting Rotational Movement To Linear Movement, Or Vice Versa; Tension Pulleys; Roller Bearings; Steering Bearings For Vehicles, Boring Heads For Rotating And/Or Supporting A Tool Or A Work Piece; Live Centers And Grinding Spindles, citing a date of first use of May 2, 1927;
· U.S. Reg. No. 948,244 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on December 5, 1972 in International Class 007 for the following registered goods: Ball Bearings, citing a date of first use of May 2, 1927;
· U.S. Reg. No. 1,255,849 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on November 1, 1983 in International Class 007 for the following registered goods: Pillow Blocks, citing a date of first use of October 1968;
· U.S. Reg. No. 1,475,644 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on February 9, 1988 in International Class 007 for the followingregistered goods: XY Positioning Tables, Linear Motion Bearings, And Ball Screws, citing a date of first use of September 1984;
· U.S. Reg. No. 4,216,727 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on October 2, 2012 in International Class 008 for the following registered goods: Hand Tools And Hand Tool-Sets For Use With Bearings, Namely, Pullers, Pushers, Straighteners, Tri-Section Press Plates, Hydraulic Pumps, Hydraulic Nuts And Spanner Wrenches, citing a date of first use of October 31, 2004; and
· U.S. Reg. No. 4,669,214 for NSK issued on the Principal Register of the U.S. Patent & Trademark Office on January 13, 2015 in International Classes 004, 007, and 012 for the following registered goods: Mineral Oils And Greases For Industrial Purposes, Not For Fuel; Non-Mineral Oils And Greases For Industrial Purposes, Not For Fuel; Lubricating Grease; Vehicle Engine Parts, Namely, Rocker Arms; Parts For Non-Electric Prime Movers For Land Vehicles, Namely, Tensioners For Land Vehicle Engine Timing Belts; Ball Bearings For Industrial Machines In This Class; Roller Bearings For Machines; Needle Roller Bearings For Machines; Tapered Roller Bearings For Machines; Bearings Integral With Bearing Stands For Machines; Linear Motion Bearings For Machines; Bearings For Water Pumps Which Circulate Engine Cooling Water; Bearings, For Use As Machine Elements Other Than For Land Vehicles; Parts And Fittings Of Bearings For Machine Elements, Not For Land Vehicles; Shafts, Axles And Spindles, Not For Land Vehicles; Shaft Couplings And Connectors For Machine Elements, Not For Land Vehicles; Spindles For Use As Parts Of Machine Tools; Machine Parts, Namely, Joints; Cam Clutches For Machines; One-Way Clutches For Machines; Speed Change Gears For Machine Elements, Not For Land Vehicles; Actuators, Namely, Rotational Actuators And Linear Actuators; Power transmissions And Gearing For Machines, Not For Land Vehicles; Ball Screws For Machines; Positioning Devices For Machines; Machine Parts, Namely, Index Devices; Machine Parts, Namely, XY Tables; AC Motors And DC Motors Not Including Those For Land Vehicles But Including Parts For Any AC Motors And DC Motors; Wheel Bearings For Land Vehicles; Wheel Bearings Integral With Wheel Hubs For Land Vehicles; Bearings For Clutches For Land Vehicles; Bearings For Use As Machine Elements For Land Vehicles; Parts And Fittings Of Bearings For Land Vehicles; Shafts, Axles And Spindles For Land Vehicles; Shaft Couplings And Connectors For Land Vehicles; One-Way Clutches For Land Vehicles; Pulleys Integral With One-Way Clutches And Bearings For Land Vehicles; Machine Elements For Land Vehicles, Namely, Transmissions And Their Parts And Fittings, Water Pump Bearings, Joints, Rocker Arms, Pulleys, Tensioners, Idlers, Friction Clutch Assemblies, Friction Plates, Separator Plates, Brake Bands, Ball Screws, And Speed Change Gears; Steering Devices For Land Vehicles; Parts And Fittings Of Steering Devices For Land Vehicles.
By reason of the adoption and longstanding continuous use of the NSK mark since at least as early as May 2, 1927 for the highly-relevant “bearing” goods (which term(s) also appear in the content of the disputed domain name nsk-ntn-skf.com, this designation has a distinctive quality and has acquired special and particular significance and very valuable goodwill as identifying a global brand of bearing products and related goods, including via the Internet.
Consequently, and as a result of such usage, consumer recognition, and business goodwill, the NSK mark is protected as a proprietary mark under the laws of the United States and numerous other countries, including the right to prevent others from using any mark, domain name, or other designation that is confusingly similar thereto.
B. Respondent’s Unlawful Activities
Based upon the current ICANN WHOIS information available to Complainant, Respondent is the owner of the domain name nsk-ntn-skf.com and currently identifies itself as: YinSi BaoHu Yi KaiQi of an organization, YinSi BaoHu Yi KaiQi, reciting a mailing address of 3/F.,HiChina Mansion, No.27 Gulouwai Avenue, Dongcheng district, Beijing 100120, China Beijing Beijing 100120 CN (China), a telephone number of +86.1065985888, and an email corresponding to: YuMing@YinSiBaoHu.AliYun.com. A January 12, 2017 printout of the nsk- ntn-skf.com site content (portions in English) which identifies itself as “MOBEI” and/or “MO Bay Shandong Bearing Technology Ltd.” and makes no reference to the named Registrant of Zhang Bei / Shandong Huagong bearing CO., LTD.
Given the recent creation of the nsk-ntn-skf.com domain name, compared to the longstanding use of the NSK mark, Respondent has engaged in the directed and volitional activity of adopting and using the domain name nsk-ntn-skf.com in a wholly unauthorized manner to divert prospective consumers, users, and internet viewers to Respondent’s site, not only to offer and sell unauthorized bearings products under the mistaken belief that they originate with Complainant and true trademark owner under the NSK mark (consisting of bearing goods of unknown origin and quality), but where the nsk-ntn-skf.com site itself arguably morphs into a “click-through” site which offers, promotes, and sells directly competing bearing products which claim to be those of “NSK”, under the prior federally registered rights in the NSK mark. Support for this specific “click-through” position is found not only through Respondent’s content relating to multiple “streaming” third party brands, but by Respondent’s selection of the nsk-ntn-skf.com itself which expressly includes the inclusion of EACH OF the “NSK”, “NTN”, and “SKF” components as nsk-ntn-skf.com where NSK, NTN, and SKF are all separately existing and fully functioning independent brands of competing bearing products owned by third party entities having no affiliation with NSK. In this regard, NSK is not advancing the putative rights of the third party NTN or SKF trademark owner(s), but reiterates that there is absolutely no affiliation between the NSK, NTN and SKF brands.
Respondent is currently using the domain name nsk-ntn-skf.com to divert users to Respondent’s site, which offers, promotes, and sells directly competing bearing products as separate and stand-alone “NSK” branded products (i.e. the undeniable “registered goods”) of the federally registered NSK mark as well as Complainant’s own prior and authorized/official site found at nskamericas.com. Respondent directly overlaps, and trades upon, this bearing-related content and material through the nsk-ntn-skf.com website. Respondent has no rights or legitimate interests in the nsk-ntn-skf.com domain name. Rather, any such offer to sell bearing goods and products previously federally registered in and through the NSK trademarks herein constitute an almost textbook case of trademark infringement since Respondent’s subject domain name, nsk-ntn-skf.com, is identical to Complainant’s longstanding and NSK mark for directly identical bearing products.
To the extent that Respondent’s content at the nsk-ntn-skf.com site further comprises questionable “click-through” activity to yet further unknown third parties, Complainant reiterates that none of the “click-through” entities or parties are, in fact, any actual authorized distributor(s) or sellers of legitimate bearing products manufactured by NSK Ltd. Once again, for purposes of public safety and the very real argument that an internet user may utilize Respondent’s unauthorized nsk-ntn-skf.com website to purchase a non-genuine NSK bearing of unknown origin, quality, or warranty, it should be seen that: (i) Respondent has no rights or legitimate interests to any aspect of the nsk-ntn-skf.com domain name; (ii) Respondent’s actions are an almost textbook case of trademark infringement since Respondent’s subject domain name, nsk-ntn-skf.com, is identical to Complainant’s prior and registered goods clause(s) embodied in the multiple NSK trademark registrations for the truly identical subject matter of “bearing” products dating back to at least May 2, 1927; and (iii) Complainant, the legal trademark owner of the NSK mark, has utterly no idea who the parties are on the site claiming to sell NSK-branded bearings, what those NSK-branded bearings may actually be, and/or Complainant itself may be subject to false warranty claims relating to the putative sale of bearing products through the nsk-ntn-skf.com domain name and site.
With great respect to Respondent, Complainant is, remains, the longstanding manufacturer of a globally recognized brand of bearing products whose valid issued and registered trademark rights in the NSK mark have been appropriated by Respondent to traffic and offer unauthorized NSK-branded bearing products through the nsk-ntn-skf.com domain name to others, as documented in the accompanying exhibits, but then further utilizes the nsk-ntn- skf.com content to arguably create a “parking page” with additional suspect third-party links. When coupled with the equally documented fact that Complainant is, and has been, the federal registrant of the identical NSK mark before the U.S. Patent & Trademark Office (PTO) for the relevant bearing goods for literally years prior to the creation of the nsk-ntn- skf.com content and site, it should be seen that Respondent has no legitimate interests in the domain name, nsk-ntn-skf.com which is being used in a bad faith by this Respondent.
III. ARGUMENT
Pursuant to the ICANN Policy, Complainant must establish the following to obtain the relief it requests in this action: (i) the accused domain name (nsk-ntn-skf.com) is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the accused domain name; and (iii) the accused domain name has been registered and is being used in bad faith. (ICANN Policy §4(a)). As reflected in the accompanying evidence made of record in this proceeding and for the reasons set forth below, Complainant readily satisfies each of these requirements.
A. The Accused Domain Name Is Identical to Complainant’s Mark
NSK owns valid and enforceable rights in the NSK mark in the United States and elsewhere by virtue of the continuous use of this mark since at least as early as May 2, 1927 for a wide array of industrial and manufacturing goods, explicitly including “bearing” products by name, all as documented in the multiple prior federal registrations before the U.S. Patent & Trademark Office (PTO).
For years prior to the creation of the disputed nsk-ntn-skf.com domain name, Complainant has both used and taken steps to protect and register the NSK mark to promote and sell its bearing products and goods, culminating in the issuance of multiple federal trademark registrations for the NSK mark before the U.S. Patent & Trademark Office and numerous foreign equivalents. The accused domain name, nsk-ntn-skf.com, is identical to Complainant’s NSK mark, especially when used in connection with the underlying and descriptive “bearing” goods, which clearly comprise Complainant’s registered goods. Here, the NSK mark is a prior registered mark of Complainant, yet the nsk-ntn-skf.com website clearly exists to promote, advertise, and sell identical “NSK” bearings (as undeniably stand-alone products) in a wholly unauthorized manner.
Although Complainant readily acknowledges that it is not the trademark owner of the NTN or SKF components also found in the disputed domain name, nsk-ntn-skf.com, it is affirmatively stated that EACH of the “NSK,” “NTN,”, and “SKF” components were adopted/selected by Respondent in an equally unlawful manner where “NTN” and “SKF” are separate third party brands of bearing products which compete with Complainant, NSK.
Most notably, the NTN and SKF marks – for the same registered goods of bearings – are each also the subject matter of longstanding third party registrations. See U.S. Reg. No. 502,840 for SKF issued on October 12, 1948 and U.S. Reg. No. 709,011 for NTN issued on December 27, 1960. Complainant, NSK, is not affiliated with these third party registrants. Rather, they are competing brands of bearing products in the United States and throughout the world. Complainant cannot over-emphasize this point. Based upon the multiple, prior, and existing incontestable federal trademark registrations before at least the U.S. Patent & Trademark Office (PTO) shown at Respondent’s adoption of the nsk- ntn-skf.com domain name and content at legitimately and reasonably viewed to be:
(1) not only an unauthorized taking of the prior federally registered marks to traffic in equally unauthorized bearing products of an unknown origin and quality, but also
(2) manifests an intentional and deliberate desire to confuse relevant consumers of bearing products into believing that the site is authorized by NSK or, worse yet, that NSK is somehow affiliated with NTN/SKF.
To the extent that Respondent may assert that the disputed domain name, nsk-ntn- skf.com, contains an additional component relating to some putative “combination” along with the NSK mark, Complainant cites and relies upon BookIt.com, Inc. v. PrivacyProtect.org/ICS Inc., WIPO Case No. D2013-0775, where the respondent at issue claimed rights in the domain name extranetbookit.com in comparison to the asserted rights in bookit.com. It was determined “that the mere addition of the generic and descriptive term ‘extranet’ is not sufficient to avoid a confusing similarity between the disputed domain name and Complainant’s mark.” Applying this reasoning to nsk-ntn-skf.com NSK likewise states that “bearings” are the core goods of NSK (i.e. bearings and bearing products), which are undeniably set forth in the registered goods clauses of the existing, incontestable, and issued federal trademark registrations for the NSK mark. In contrast, Respondent’s activities are a clear attempt to seemingly take advantage of an Internet user’s interest in “NSK” to divert traffic to Respondent’s site and also serve as a “click-through” destination to demonstrably non-authorized distributors and sellers of actual NSK bearing products. As such, because the accused domain name is identical to the NSK mark and goods, Complainant satisfies the first element of proof required under ICANN Policy §4(a).
B. Respondent Has No Rights/Legitimate Interests In The Domain Name
Complainant has not authorized Respondent to use the NSK mark in any form or fashion. Most notably, Complainant has not authorized or sanctioned Respondent to adopt, create, register, or place content on the nsk-ntn-skf.com domain name in any form. Respondent has no preexisting rights in any aspect of the designation NSK as a trademark, trade name, nor does Respondent possess any other legitimate interest as a source identifier in nsk-ntn-skf.com as a domain name. See Arthur Guiness Son & Co. (Dublin) Limited v. Feeney O’Donnell and John O’Donnell (Forum D2000-1710) (holding that the respondents had no legitimate interests in the domain name guinessdraught.org, as members of the public would assume an association between respondents’ proposed website and complainant).
Further, Respondent cannot assert rights or legitimate interests in the subject domain name based upon any of the circumstances identified in ICANN Policy §4(c). Namely, it is well established that merely using a domain name to redirect or divert Internet users to Respondent’s own commercial web site is neither a bona fide offering of goods or services, nor a legitimate noncommercial use. Compare ICANN Policy §§4(c)(i) and (iii) with North Coast Medical, Inc. v. Allegro Medical (Forum Case No. 95541, Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its web site) and MBNA America Bank v. John Zuccarini aka Cupcake Patrol (Forum 96361, Feb. 8, 2001) (citing the decision in North Coast Medical and finding no bona fide use or legitimate noncommercial use where Respondent used the domain name to redirect Internet users to its own commercial site). Regarding ICANN Policy §4(c)(ii), Respondent is not commonly known by the domain name. Indeed, if anything, Respondent is known by “YinSi BaoHu Yi KaiQi” at nsk-ntn-skf.com. It appears that the content appearing at nsk-ntn- skf.com does not comprise any use of “YinSi BaoHu Yi KaiQi” (the putative Registrant’s name) but instead refers to the heretofore unknown entity name of “MOBEI.”
In other words, even aside from not possessing any legitimate interest in the nsk-ntn- skf.com domain name as a source identifier, Respondent disseminates the site in the name of equally misdirected contacts and entities – including under EACH OF the NSK, NTN, and SKF trademarks owned by separate third parties for the purpose of trafficking and selling bearing products which is/are the directly overlapping registered goods. This is evidence of bad faith or, at a minimum, an attempt to traffic in the domain name.
Accordingly, Respondent has no legitimate interest in the nsk-ntn-skf.com domain name.
C. Respondent Has Registered And Is Using The Domain Name In Bad Faith
ICANN Policy §4(b)(iv) states that evidence of bad faith may be inferred when “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” It follows from previous UDRP decisions that the registration and use of a domain name to re-direct Internet users to website that offer products and services in competition with complainant’s services, constitutes a bad faith registration and use.”
The fact that the disputed domain name nsk-ntn-skf.com has links and content promoting the offering and sale of supposed identical NSK-branded bearings on the nsk-ntn-skf.com website indicates a clear desire of Respondent to intentionally attract Internet users to their web site by creating confusion using either any of the NSK, NTN, and/or SKF mark(s) to traffic in the same exact registered goods (i.e. bearings). Based upon Respondent’s own desire to lure users to the site for commercial gain, coupled with the false association between the NSK, NTN, and SKF brands of bearings, Complainant submits that it has satisfied the requirement for showing that Respondent registered and is using the subject domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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(f), 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 (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 is a global manufacturer and retailer of industrial ball bearing products. Complainant uses the NSK mark in conjunction with its business. Complainant registered the NSK mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 857,857, registered Oct. 1, 1968). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even though Respondent is in another country. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant’s USPTO registration is sufficient to show Complainant’s rights in the NSK mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <nsk-ntn-skf.com> is confusingly similar to Complainant’s NSK mark because it incorporates the mark in its entirety, adding two additional well-known competing marks (NTN and SKF), hyphens, and the “.com” gTLD. There is no doubt Complainant’s three letter mark is used in its entirety, set off by hyphens (which makes it very obvious in the domain name). Adding hyphens must generally be disregarded under a Policy ¶4(a)(i) analysis because they are one of very few punctuation marks that can be used in domain names (the other one is the notorious underscore). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004). Adding other, well known industry marks to Complainant’s mark does not reduce the level of confusion, it merely increases it. See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Respondent’s <nsk-ntn-skf.com> is confusingly similar to Complainant’s NSK mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in <nsk-ntn-skf.com>. Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Zhang Bei” of “Shandong Huagong bearing CO., LTD.” There is no obvious relationship between the domain name and the registrant’s name. Absent a response, “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name.” Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). The Panel may conclude that “[g]iven the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant claims it has not authorized or licensed Respondent to use the NSK mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not disputed this. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <nsk-ntn-skf.com> domain resolves to a webpage displaying Complainant’s NSK marked products alongside the marked products of direct competitors.
Assuming Respondent is a gray market reseller (a fact not entirely free from doubt), Respondent does not meet all of the required elements under Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) to use Complainant’s mark in a domain name:
• Respondent must actually be offering the goods or services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent may not use domain names confusingly similar to Complainant’s mark to divert Internet users seeking Complainant’s goods and services to competing products. This does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using <nsk-ntn-skf.com> in bad faith. Respondent’s <nsk-ntn-skf.com> resolves to a webpage displaying Complainant’s NSK mark, while offering competing products. The disputed domain name attempts to attract internet users to Respondent’s website for commercial gain, at Complainant’s commercial loss. Respondent cannot use Complainant’s mark to sell competitors’ products. That constitutes bad faith registration and use under Policy ¶4(b)(iv), see Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001). Moreover, Panels have agreed that “[r]espondent’s use of the website to display products similar to [c]omplainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015).
Complainant claims the disputed domain name disrupts Complainant’s business by creating confusion among users looking for Complainant’s products. “Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).” Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003). This Panel agrees and finds Respondent registered and is using <nsk-ntn-skf.com> in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <nsk-ntn-skf.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 9, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page