DECISION

 

Emerson Electric Co. v. Zhao Ke

Claim Number: FA1709001750157

PARTIES

Complainant is Emerson Electric Co. (“Complainant”), represented by John M. Groves of Emerson Electric Co., Missouri, USA.  Respondent is Zhao Ke

(“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <emerson.group> and <emerson.com.co>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and 1API GmbH.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on September 21, 2017; the Forum received payment on September 21, 2017.

 

On September 23, 2017 and September 27, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com and 1API GmbH confirmed by e-mail to the Forum that the <emerson.group> and <emerson.com.co> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and 1API GmbH and that Respondent is the current registrant of the names.  PDR Ltd. d/b/a PublicDomainRegistry.com and 1API GmbH have verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com and 1API GmbH registration agreements 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@emerson.group and postmaster@emerson.com.co.  Also on September 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 October 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Emerson Electric Co., is a diversified, global technology and engineering leader that manufactures, distributes, and sells products such as electric sewing machines, electric dental drills, and power tools. Since 1890, Complainant has used its EMERSON mark to promote its goods and services. Complainant has established rights in the EMERSON mark through registration with the United States Patent and Trademark Office

(“USPTO”) (e.g., Reg. No. 111,931, registered Aug. 16, 1916). See Compl. Ex. A. Respondent’s <emerson.group> and <emerson.com.co> are identical or confusingly similar to Complainant’s mark because each merely appends a generic top-level domain (“gTLD”) to the fully incorporated mark.

2.    Respondent does not have rights or legitimate interests in the infringing domain names. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the domain names. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain names redirect Internet users to websites featuring links to third-party websites which directly reference the Complainant and its business. See Compl. Ex. C. Further, Respondent offered to sell the domain names to the general public for excessive amounts. See Compl. Ex. B.

3.    Respondent registered and is using the disputed domain names in bad faith. Respondent offers to sell the domain names to the general public for amounts in excess of out of pocket costs. See Compl. Ex. B. Additionally, Respondent has been involved in prior UDRP decisions, establishing a pattern of bad faith registration and use. See Compl. Ex. H & I (prior adverse UDRP decisions and other domain names held by Respondent). Further, Respondent attempts to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or location of a product or service on Respondent’s websites. Finally, Respondent registered domain names which are confusingly similar to Complainant’s well-known mark and has thus demonstrated a knowledge of Complainant’s trademark. This is further evinced by the fact that Complainant ranks 120th on the list of Fortune 500 companies and 484th on the fortune list of global 500 companies. See Compl. Ex. F.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <emerson.group> and <emerson.com.co> domain names are confusingly similar to Complainant’s EMERSON mark.

2.    Respondent does not have any rights or legitimate interests in the <emerson.group> and <emerson.com.co> domain names.

3.    Respondent registered or used the <emerson.group> and <emerson.com.co> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims it has established rights in the EMERSON mark through registration with the USPTO (e.g., Reg. No. 111,931, registered Aug. 16, 1916). See Compl. Ex. A. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established rights in the EMERSON mark.

 

Complainant next argues that Respondent’s <emerson.group> and <emerson.com.co> domain names are identical or confusingly similar to Complainant’s mark as they merely append a gTLD to Complainant’s fully incorporated mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel notes that one of the domain names, <emerson.com.co>, also adds the term “.com” prior to the gTLD “.co,” which also fails to distinguish the domain name under the Policy. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”). The Panel therefore finds that the disputed domain names are identical and/or confusingly similar to the EMERSON mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 contends that Respondent has no rights or legitimate interests in the <emerson.group> and <emerson.com.co> domain names.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies

            “Zhao Ke” as the registrant.  See Compl. Ex. B. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the EMERSON mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain names redirect Internet users to websites featuring links to third-party websites. Using confusingly similar domain names to host websites containing links to competing webpages fails to make a bona fide offer of good or services or a legitimate noncommercial or fair use. See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Screenshots of the resolving websites indicate that the domain names are used to display parked hyperlinks for

“Emerson Power,” “Emerson Process Management,” and “Emerson Industrial Automation.” See Compl. Ex. C. Therefore, the Panel concludes that Respondent is not using the infringing domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.

Further, Complainant alleges that Respondent offers to sell the domain names for an excessive amount. Offers to sell a domain name may be used as evidence of lacking rights and legitimate interests in disputed domain names. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, both domain names are advertised for sale to the general public on a website called <afternic.com> for $9,999.00 each. See Compl. Ex. B. Accordingly, the Panel finds that Respondent’s offer to sell the domain names for greater than out of pocket costs further evinces Respondent’s lack of rights and legitimate interest in the domain names.

 

Registration and Use in Bad Faith

Complainant claims that Respondent offers the <emerson.group> and <emerson.com.co> domain names for sale to the general public. Offering confusingly similar domain names for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). According to the screenshots provided by Complainant, Respondent offers to sell the domain names to the general public for $9,999.00 each on a website called <afternic.com>. See Compl. Ex. B. Accordingly, the Panel finds Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration.

 

Complainant further argues that Respondent registered the disputed domain names in bad faith as Respondent has a propensity for registering confusingly similar domain names and has prior adverse UDRP decisions against it. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012)

(“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides a list of prior adverse UDRP decisions against Respondent, and also provides a list of domain names which Respondent currently holds. See Compl. Ex. H & I. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior history of registering confusingly similar domain names, and the current domain names which it currently holds.

 

Additionally, Complainant argues that Respondent registered and uses the <emerson.group> and <emerson.com.co> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing hyperlinks. Using a disputed domain to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Screenshots of the resolving websites indicate that the domain names are used to display parked hyperlinks for “Emerson Power,” “Emerson Process Management,” and “Emerson Industrial Automation.” See Compl. Ex. C. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Complainant lastly claims that Respondent had knowledge of Complainant’s EMERSON mark. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the EMERSON mark as Respondent registered domain names which are confusingly similar to Complainant’s well-known mark, and due to the fact that Complainant ranks 120th on the list of Fortune 500 companies and 484th on the fortune list of global 500 companies. See Compl. Ex. F. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

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.group> and <emerson.com.co> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  November 2, 2017

                                                                                               

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page