Komatsu America Corp. v. Nikolay Fedorchuk
Claim Number: FA1707001741469
Complainant is Komatsu America Corp. (“Complainant”), represented by Christopher M. Dolan of BARNES & THORNBURG LLP, Illinois, USA. Respondent is Nikolay Fedorchuk (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <komatsupartsbook.com>, registered with Key-Systems GmbH.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2017; the Forum received payment on July 26, 2017.
On July 27, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <komatsupartsbook.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@komatsupartsbook.com. Also on July 27, 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 August 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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
Complainant, Komatsu America Corp., is a wholly owned subsidiary of Komatsu Ltd, an equipment manufacturer and distribution company. Complainant uses the KOMATSU mark in connection with this business. Complainant has rights in the mark due to registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,041,661, registered Mar. 4, 1997). Respondent’s <komatsupartsbook.com> is confusingly similar as it appends the generic terms “parts” and “book,” as well as the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the KOMATSU marks. Further, Respondent failed to use <komatsupartsbook.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent uses <komatsupartsbook.com> to pass itself off as Complainant and sell unauthorized versions of Complainant’s products.
Respondent registered and uses <komatsupartsbook.com> in bad faith. Respondent disrupts Complainant’s business through the sale of copies of Complainant’s products. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the KOMATSU marks as to the source of Respondent’s website. Respondent had actual knowledge of Complainant’s rights in the KOMATSU mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <komatsupartsbook.com> domain name.
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(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 asserts rights in the KOMATSU mark due to registration with the USPTO (i.e. Reg. No. 2,041,661, registered Mar. 4, 1997). Registration with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). 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).”). The Panel finds Complainant has rights in the KOMATSU mark.
Next, Complainant argues Respondent’s <komatsupartsbook.com> is confusingly similar as it appends the generic terms “parts” and “book,” as well as the gTLD “.com” to Complainant’s wholly incorporated mark. The addition of generic terms does not remove a resulting domain name from the realm of confusingly similar; likewise, the addition of a gTLD is irrelevant for a Policy ¶ 4(a)(i) analysis. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds Respondent’s domain name to be confusingly similar to Complainant’s KOMATSU marks.
Complainant has proved this element.
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 (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 asserts Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the KOMATSU family of marks. In lieu of a response, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name; similarly, in lieu of evidence demonstrating a complainant’s authorization of a respondent’s use of a mark, panels have found respondents to not be commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record names “Nikolay Fedorchuk” as the registrant of the <komatsupartsbook.com> domain name and there is no evidence of Complainant’s authorization of Respondent’s use of the KOMATSU mark. The Panel finds Respondent is not commonly known by the disputed domain name.
Next, Complainant asserts Respondent failed to use <komatsupartsbook.com> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent uses <komatsupartsbook.com> to pass itself off as Complainant and sell unauthorized versions of Complainant’s products. Use of a domain name to pass itself off as a complainant and sell counterfeit products evinces a lack of rights and legitimate interests per Policy ¶ 4(c)(i) & (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Respondent uses Complainant’s KOMATSU mark to sell counterfeit versions of Complainant’s product manuals. The Panel finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant has proved this element.
First, Complainant asserts Respondent disrupts Complainant’s business through the sale of copies of Complainant’s products. Use of a domain name to sell counterfeit versions of a complainant’s property demonstrates disruption per Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). Here, Complainant attaches screenshot evidence of Respondent’s counterfeit manuals. The Panel agrees with Complainant and finds Respondent disrupted Complainant’s business.
Next, Complainant argues Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s <komatsupartsbook.com> website by creating a likelihood of confusion with the KOMATSU marks as to the source of the Respondent’s website. Deliberate creation of confusion as to the source of a mark to benefit commercially from use of said mark evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). Complainant provides screenshot evidence of Respondent’s use of Complainant’s KOMATSU mark to confuse Internet users otherwise seeking Complainant. The Panel finds this is evidence of Respondent’s bad faith.
Last, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the KOMATSU mark based upon Respondent’s extensive use of said mark. Actual notice of a complainant’s rights in a mark can be determined in an analysis of the name used for the disputed domain and the use made of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent appropriates Complainant’s mark in the domain name, resolving webpage, and products for sale. The Panel finds this is evidence of Respondent’s bad faith registration and use of the <komatsupartsbook.com> domain name.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <komatsupartsbook.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 27, 2017
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