Emerson Electric Co. v. xiaoqiang su / su xiaoqiang / xiaoqiangsu
Claim Number: FA1711001756928
Complainant is Emerson Electric Co. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is xiaoqiang su / su xiaoqiang / xiaoqiangsu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <emerson-ch.com> and <china-emerson.com>, registered with Chengdu Fly-Digital Technology Co., Ltd. and 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 November 3, 2017; the Forum received payment on November 3, 2017.
On November 7, 2017; Nov 08, 2017, Chengdu Fly-Digital Technology Co., Ltd. and HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <emerson-ch.com> and <china-emerson.com> domain names are registered with Chengdu Fly-Digital Technology Co., Ltd. and HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. Chengdu Fly-Digital Technology Co. and Ltd. and HiChina Zhicheng Technology Limited have verified that Respondent is bound by the Chengdu Fly-Digital Technology Co., Ltd. and HiChina Zhicheng Technology Limited registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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-ch.com and postmaster@china-emerson.com. Also on November 10, 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 December 5, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
This Complaint is based on the following grounds:
Emerson Electric Co. (“Emerson”) is the owner of trademark registrations across various jurisdictions. These include the State Administration for Industry and Commerce of the People’s Republic of China (SAIC), European Union Intellectual Property Office (EUIPO), and U.S. Patent and Trademark Office (USPTO) for selected registrations in these jurisdictions, which demonstrate that Complainant has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s Marks.” The trademarks relevant to this instant matter are detailed in the Complaint.
Emerson Electric Co. was established in 1890 in St. Louis, Missouri (USA) as Emerson Electric Manufacturing Co. by Civil War Union veteran John Wesley Emerson to manufacture electric motors using a patent owned by the Scottish-born brothers Charles and Alexander Meston. In 1892 it became the first to sell electric fans in the United States. It quickly expanded its product line to include electric sewing machines, electric dental drills, and power tools.
Today, Emerson (NYSE: EMR) is a diversified, global technology and engineering leader. It offers a wide range of products and services in the industrial, commercial and consumer markets through its Automation Solutions and Commercial & Residential Solutions businesses. Recognized widely for its engineering capabilities and management excellence, Emerson has approximately 81,420 employees and 155 manufacturing locations worldwide.
Complainant operates numerous websites, chief among them <emerson.com>. According to similarweb.com, <emerson.com> attracts over 600,000 unique visitors per month, has a global rank of 61,983 with a ranking of 29,502 in the United States.
A. The Disputed Domain Names are Identical or Confusingly Similar to a Trademark or Service Mark in which Complainant has Rights (Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))
By virtue of its trademark registrations, Complainant is the owner of Complainant’s trademarks. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”). Furthermore, a complainant is not required to register its marks within the country of Respondent in order to protect its rights in those marks. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum April 23, 2007) (finding that it does not matter whether Complainant has registered its trademark in the country in which Respondent resides, only that it can establish rights in some jurisdiction); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 0622122 (Forum Apr. 14, 2006).
When comparing the Disputed Domain Names to Complainant’s trademark, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and Complainant’s trademarks. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (Forum May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name”).
The Disputed Domain Names incorporate Complainant’s EMERSON trademark in its entirety while merely adding the geographically descriptive terms “ch” and “china” to such trademark, thus rendering the Disputed Domain Names confusingly similar to this trademark. Although the geographically descriptive term “ch” is the country code for Switzerland, it is obvious that Respondent intended this term to be a shorthand term for China, considering that the letters “c” and “h” are the first two letters in the word “China” and the Disputed Domain Name <emerson-ch.com> resolves to a website which specifically targets customers in China. Nevertheless, it is well established that the addition of a geographic term or place name does not alter the underlying trademark or negate the confusing similarity, and numerous Panels have established that the mere addition of geographical terms to a complainant’s trademark does not sufficiently differentiate the disputed domain name from that trademark. See Trip Network Inc. v. Alviera, FA 0914943 (Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the CHEAPTICKETS mark in the <cheapticketscancun.com> domain name, among others, does not overcome a finding of confusing similarity under Policy ¶4(a)(i)). See also Skype Ltd. v. Sacramento, FA 0747948 (Forum Aug. 30, 2006) (“The addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶4(a)(i)”). See also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark”).
Moreover, Respondent’s use of these particular geographically descriptive terms in conjunction with Complainant’s trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Names and Complainant’s trademark as these specific terms are closely linked and associated with Complainant. More specifically, Complainant has set up more than 40 legal entities in China, 23 of which are manufacturing facilities, and operate in 14 locations Shanghai, Shenzhen, Suzhou, Fuzhou, Beijing, Tianjin, Qingdao, Jiangmen, Chengdu, Mianyang, Shenyang, Nanjing, Zhuhai and Xi’an. Thus, by adding these particular geographically descriptive terms to Complainant’s trademark, Respondent seeks to create the impression that the Disputed Domain Names are somehow connected to Complainant and its trademark and brand, which thereby enhances the confusing similarity with Complainant’s trademark. See Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, D2013-1323 (WIPO Sept. 10, 2013) (finding that “the addition of the word ‘London’ to the trademarks [SANDERSON and SANDERSON HOTEL] as part of the Domain Name [sandersonlondonhotel.org] does not negate confusing similarity but rather enhances it in that London is a geographic term that identifies the place where Complainant’s Sanderson Hotel is located).
Respondent’s addition of a hyphen does nothing to distinguish the Disputed Domain Names from Complainant’s trademark. In other words, the use of such hyphen does not diminish the confusing similarity between the Disputed Domain Name and Complainant’s trademarks and should be disregarded for purposes of making this determination. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 0094321 (Forum Apr. 24, 2000) (Finding that punctuation is not significant in determining the similarity of a domain name and mark). See also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (Holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Additionally, Respondent’s use of the Disputed Domain Names contribute to the confusion. Respondent is using the Disputed Domain Names which resolve and previously resolved to websites that copy/copies and attempt/attempted to duplicate Complainant’s official website, which suggest that Respondent intended the Disputed Domain Names to be confusingly similar to Complainant’s trademark as a means of furthering consumer confusion. In a previous cases involving a domain name that resolved to a website that sought to imitate complainant’s website, a panelist found that such use was evidence that the domain name was confusingly similar to the mark in question. See The Gaming Board for Great Britain v. Gaming Board, D2004-0739 (WIPO Oct. 18, 2004) (“the way in which Respondent has used the domain name [<gbgamingboard.org>] suggests that Respondent intended users of Respondent’s website to believe that the website at the disputed domain name was associated with Complainant”). As a result, Respondent’s use of the Disputed Domain Names which resolve or previously resolved to websites that imitate or imitated Complainant’s official website is further evidence that the Disputed Domain Names are confusingly similar to Complainant’s trademark.
In sum, Respondent’s Disputed Domain Names are identical and/or confusingly similar to Complainant’s EMERSON trademark. Accordingly, Complainant contends that Policy ¶4(a)(i) has been satisfied.
B. Respondent has no Rights or Legitimate Interests in Respect of the Disputed Domain Names (Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))
The granting of registrations by the State Administration for Industry and Commerce of the People’s Republic of China (SAIC), European Union Intellectual Property Office (EUIPO), and U.S. Patent and Trademark Office (USPTO) to Complainant for the EMERSON trademark is prima facie evidence of the validity of the term “EMERSON” as a trademark, of Complainant’s ownership of this trademark, and of Complainant’s exclusive right to use the EMERSON trademark in commerce on or in connection with the goods and/or services specified in the certificates of registration.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names.
Respondent is not commonly known by the Disputed Domain Names, which evinces a lack of rights or legitimate interests. See Policy, ¶4(c)(ii). Where “the Whois information suggests that Respondent is known as an entity other than the trademark associated with Complainant, and Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s…mark,” a Panel should find that Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (Forum Aug. 30, 2007). In the instant case, the pertinent Whois information identifies the Registrant as “xiaoqiang su / su xiaoqiang / xiaoqiangsu” which does not resemble the Disputed Domain Names in any manner – thus, where no evidence, including the Whois record for the Disputed Domain Names, suggests that Respondent is commonly known by the Disputed Domain Names, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Disputed Domain Names within the meaning of ¶4(c)(ii). See Instron Corp. v. Kaner, FA 0768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the Whois information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that Respondent was commonly known by the domain names in dispute). See also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 0715089 (Forum July 17, 2006) (respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name under Policy ¶4(c)(ii), where there was no evidence in the record, including the relevant Whois information, suggesting that respondent was commonly known by the disputed domain name).
Further, the Disputed Domain Name <emerson-ch.com> redirects internet users to a website that copies and attempts to duplicate Complainant’s official website by copying its design. On the other hand, the Disputed Doman Name <china-emerson.com>, although currently resolving internet users to a blank page which lacks content, previously resolved to a website that copied and attempted to duplicate Complainant’s official website by copying its design. As such, the Disputed Domain Names’ websites has/had purposely been designed to serve as an exact replica of Complainant’s website, all as a means of deceiving internet users into believing that the Disputed Domain Names and their websites are associated with Complainant. Respondent’s attempt to pass off the Disputed Domain Names as being affiliated with Complainant, and in fact as being Complainant, is in itself evidence of the fact that Respondent does not have rights and legitimate interests in the Disputed Domain Names pursuant to ¶4(a)(ii), as confirmed by numerous past Panels. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (Panel found Respondent’s attempt to pass itself of as Complainant was not 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) when Respondent used the disputed domain name to present users with a website that was nearly identical to Complainant’s website). See also Emaar Properties PJSC v. Castillos / Hector Castillos, FA 1472933 (Forum Jan. 10, 2013) (Panel finds that Respondent’s use of the disputed domain name to attempt to pass itself off as Complainant is not 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)). See also American International Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that Respondent’s attempt to pass itself off as Complainant online was evidence that Respondent has no rights or legitimate interests in the disputed domain name). See also Marino v. Video Images Prod., D2000-0598 (WIPO Aug. 2, 2000) (where registrant selects a domain name that “gives rise to the impression of an association with Complainant,” it is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to paragraphs 4(c)(i) and (iii) of the Policy).
Further still, Respondent’s inclusion of Complainant’s logo on the Disputed Domain Names’ websites is/was a direct effort to take advantage of the fame and goodwill that Complainant has built in its brand, and Respondent is/was not only using the confusingly similar Disputed Domain Names, but is/was also imitating Complainant by displaying Complainant’s logo. This imitation is referred to as “passing off,” and “Respondent, in [also] using [a] confusingly similar domain name to mislead Complainant’s customers, is not making a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).” See Microsoft Corp. v. Lafont, FA 1349611 (Forum Nov. 9, 2010) (finding that Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)). See also Houghton Mifflin Co. v. Weatherman, Inc., D2001-0211 (WIPO Apr. 25, 2001) (no bona fide offering where website's use of Complainant's logo…suggested that website was the official Curious George website). See also FatWallet, Inc. v. www.fatyourwallet.com a/k/a Fat YourWallet, FA 1296996 (Forum Jan. 27, 2010) (“Respondent’s attempt to pass itself off as complainant is further evidence that Respondent lacks rights and legitimate interests under Policy ¶4(a)(i) in the disputed domain name”).
Respondent has intentionally chosen domain names based on a famous trademark in order to generate traffic and income through websites that sell Complainant’s products (which may or may not be counterfeit) as well as other miscellaneous products. In other words, Respondent is/was attempting to divert consumers to Respondent’s websites for commercial gain by selling either Complainant’s products or counterfeit products at those websites. Using Disputed Domain Names to sell either Complainant’s products without authorization, or counterfeit products, is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See Wolverine World Wide, Inc. v. Fergus Knox, 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). Even if Respondent is not selling Complainant’s products or counterfeit products, selling products that compete with Complainant’s business cannot constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See General Motors LLC v. MIKE LEE, 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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)”). In the instant case, Respondent uses/used the Disputed Domain Names to operate websites that sell Uninterruptable Power Supplies (UPS), precision room air conditioning units, and batteries, which directly compete with Complainant’s products available on its website.
Respondent registered the Disputed Domain Name <emerson-ch.com> on December 19, 2013 and the Disputed Domain Name <china-emerson.com> on November 30, 2015, which are significantly after Complainant filed for registration of its EMERSON trademark with State Administration for Industry and Commerce of the People’s Republic of China (SAIC), European Union Intellectual Property Office (EUIPO), and U.S. Patent and Trademark Office (USPTO), and also significantly after Complainant’s first use in commerce of its trademark in 1890.
Respondent registered the Disputed Domain Name <emerson-ch.com> on December 19, 2013 and the Disputed Domain Name <china-emerson.com> on November 30, 2015, which are significantly after Complainant’s registration of its <emerson.com> domain name on July 29, 1995.
In summary, Respondent has no rights or legitimate interests in <emerson-ch.com> and <china- emerson.com>. Accordingly, Complainant contends that Policy ¶4(a)(ii) has been satisfied.
C. The Disputed Domain Names were Registered and are Being Used in Bad Faith (Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))
Complainant and its EMERSON trademark are known internationally, with trademark registrations across numerous countries. Complainant has marketed and sold its goods and services using this trademark since 1890, which is well before Respondent’s registration of the Disputed Domain Name <emerson-ch.com> on December 19, 2013 and the Disputed Domain Name <china-emerson.com> on November 30, 2015.
By registering domain names that incorporate the EMERSON trademark in its entirety while merely adding the geographically descriptive terms “ch” and “china”, Respondent has created domain names that are confusingly similar to Complainant’s trademark, as well as its <emerson.com> domain. As such, Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. Furthermore, the Disputed Domain Names resolve or previously resolved to websites which copy/copied or attempt/attempted to duplicate Complainant’s website by copying Complainant’s logo and website design, as well as selling Complainant’s products, competing products and services. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which Respondent would have been unaware of” Complainant’s brands at the time the Disputed Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Stated differently, EMERSON is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith – where a domain name is “so obviously connected with such a well-known name and products,…its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000). Further, where the Disputed Domain Name incorporates the EMERSON trademark in its entirety while merely adding the geographically descriptive terms “ch” and “china”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, D2007- 1415 (WIPO Dec. 10, 2007)
Further, at the time of registration of the Disputed Domain Names, Respondent knew, or at least should have known, of the existence of Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se. In addition to the numerous trademarks filed in connection with Complainant’s business prior to Respondent’s registration of the Disputed Domain Names, Complainant ranks 120 on the list of Fortune 500 Companies and 484 on the Fortune list of Global 500 Companies. Additionally, Complainant was ranked 5 by Fortune Magazine on their list of Most Admired companies in 2015, which demonstrates Complainant’s fame. Further, performing searches across a number of internet search engines for “emerson-ch” or “china-emerson “returns multiple links referencing Complainant and its business. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”). See also Victoria's Secret v. Hardin, FA 096694 (Forum Mar. 31, 2001) (Finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith). Further, while constructive notice may sometimes alone be regarded as insufficient to support a finding of bad faith, numerous past Panels have held that a respondent should be considered as possessing actual notice and knowledge of a complainant’s marks, and thus having registered the domain in bad faith, where Complainant’s mark is well-known and the circumstances support such a finding, as is the case here. See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Forum Mar. 13, 2012) (“a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant’s trade mark”). See also 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”). See also Clearwater Systems, Inc. v. Glenn Johnson / Clear Water Systems of Remington Inc., D2014-0878 (WIPO Aug. 5, 2014) (“Knowledge and targeting [of a trademark] may be proven inferentially”).
ICANN policy dictates that bad faith can be established by evidence that demonstrates that “by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site…, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on [Respondent’s] web site or location.” ICANN Policy 4(b)(iv). Here, Respondent creates a likelihood of confusion with Complainant and its trademarks by registering domain names which incorporate Complainant’s EMERSON trademark in its entirety and add the geographically descriptive terms “ch” and “china”. In addition, Respondent uses and previously used the Disputed Domain Names to resolve to websites which copy/copied or attempt/attempted to duplicate Complainant’s website by copying Complainant’s logo and website design, with Respondent then attempting to profit from such confusion by selling Complainant’s products without its authority or approval and other competing goods and services. As such, Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion. The impression given by the Disputed Domain Names and their websites would cause consumers to believe Respondent is somehow associated with Complainant when, in fact, it is not. Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name, and Respondent is thus using the fame of Complainant’s trademarks to improperly increase traffic to the website listed at the Disputed Domain Name for Respondent’s own commercial gain. It is well established that such conduct constitutes bad faith. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000- 1306 (WIPO Jan. 24, 2001) (concluding that Respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that Complainant’s customers were likely to confuse with the source of Complainant’s products, especially because of Respondent’s prominent use of Complainant’s logo on the site). See also Hewlett-Packard Co. v. Ali, FA 0353151 (Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and used the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶4(b)(iv)”).
Moreover, Respondent’s use of the Disputed Domain Names constitute a disruption of Complainant’s business and qualify as bad faith registration and use under Policy ¶4(b)(iii) because Respondent’s domain names are confusingly similar to Complainant’s trademark and the websites at the Disputed Domain Names are/were being used to offer Complainant’s goods or services without Complainant’s authorization or approval. Past Panels have confirmed that using a confusingly similar domain to mislead consumers and then offering a complainant’s goods or services is evidence of bad faith registration and use. See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods). See also Andersen Corporation v. Design Price Buy Inc., FA 1261838 (Forum June 16, 2009) (Respondent’s use of a domain name confusingly similar to Complainant’s mark, which resolves to a commercial website offering Complainant’s products for sale, likely disrupts Complainant’s business). See also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Forum Jul. 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).
Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding. Past Panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name. See Encyclopedia Britannica v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (failure to positively respond to a demand letter provides “strong support for a determination of ‘bad faith’ registration and use”). See also RRI Financial, Inc., v. Chen, D2001-1242 (WIPO Dec. 11, 2001) (finding bad faith where “Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Disputed Domain Names in bad faith. See Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., FA D2014-1754 (WIPO Jan 12, 2014) (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name.”)
John M. Groves, Vice President & Group Leader Intellectual Property for Emerson Electric Co., further supports these facts and allegation through a signed affidavit.
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 cancelling or transferring 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 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.”).
Preliminary Issue: Multiple Respondents
Complainant claims the entities which control the domain names at issue are controlled by a single person and/or entity operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Disputed Domain Names both resolve to websites which copy the look and feel of Complainant’s official websites by copying Complainant’s logo and website design, as well as selling Complainant’s products and competing products. Even though the disputed domain names are registered at two different Registrars, they were all registered under the names, xiaoqiang su / su xiaoqiang / xiaoqiangsu, which ultimately refer to the same person. The registered email addresses and telephone numbers also show the Disputed Domain Names are owned by the same person.
Preliminary Issue: Language of Proceeding
The Registration Agreement is written in Chinese, thereby making the language of the proceedings normally Chinese. Complainant claims Respondent is conversant and proficient in English and the proceeding should be conducted in English. Under UDRP Rule 11(a), the Panel has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because Respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant claims it would be unfairly prejudiced if it was required to translate the Complaint into Chinese because that would delay the proceedings and adjudication of this matter. The domain names consist solely of Latin characters. Respondent used the EMERSON mark on the resolving webpages. The disputed domain names have the look and feel of the genuine Emerson web site. Respondent has not objected to the proceeding occurring in English nor has Respondent responded to the three cease and desist letters .
The Panel will allow this matter to proceed in English.
Complainant registered its EMERSON mark with the State Administration for Industry and Commerce of the People's Republic of China (“SAIC”) (e.g., Reg. No. 237301, registered Dec. 25, 1984), European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 000100651, March 5, 1999) and the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 0111931, Mar. 18, 1916). Registration with a governmental trademark agency, such as the SAIC, the EUIPO or the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark even if Respondent is located in another country. See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Complainant has rights to the EMERSON mark.
Complainant claims Respondent’s <emerson-ch.com> and <china-emerson.com> domain names are confusingly similar because they incorporate Complainant’s entire EMERSON mark while adding the geographic terms “ch” and “china,” which make the disputed domains confusingly similar to Complainant’s mark. The addition of a hyphen does not adequately distinguish them from Complainant’s mark under a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Incorporating an entire mark in a disputed domain name, adding geographic terms, and adding a hyphen along with a gTLD do not serve to distinguish a domain name from a mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Respondent’s disputed domain names are confusingly similar to Complainant’s 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 Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to 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 is not commonly known by the disputed domain names based on the WHOIS information, and Complainant has not authorized Respondent to use Complainant’s mark in a domain name. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶4(c)(ii).”). The WHOIS registration information for the <emerson-ch.com> and <china-emerson.com> domain names list the registrants as “su xiaoqiang” and “xiaoqiang su.” There is no obvious relationship between the domain names and Respondent’s registered name. The Panel concludes Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and (iii). Respondent attempts to pass itself off as Complainant by using the disputed domain names to duplicate the look and feel of Complainant’s official website, <emerson.com>, while displaying Complainant’s logo. The <china-emerson.com> domain name now resolves to a blank page without content. This suggests <china-emerson.com> is not being used (Respondent does not claim it is being used as an email server nor as a back-end for an ecommerce site, the other two obvious uses). This means Respondent is not using the <china-emerson.com> domain name at all, which means Respondent has acquired no rights or legitimate interests. Attempting to pass off as a complainant while also displaying their logo on a disputed domain name indicates a respondent acquired no rights or legitimate interests. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found Respondent’s attempt to pass itself of as Complainant was not 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) when Respondent used the disputed domain name to present users with a website that was nearly identical to Complainant’s website); see also Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that Respondent’s non-use of the disputed domain names demonstrates that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent does not use the disputed domain names for a legitimate purpose under Policy ¶¶4(c)(i) and (iii).
Under the Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 decision, the offering must meet several requirements to be a bona fide offering including, at a minimum, the following:
• 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.
This is Respondent’s burden of proof. Since Respondent has not asserted it, the possible defense must fail.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain names in bad faith because Respondent has intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Respondent disrupts Complainants business because the disputed domain names are confusingly similar to the EMERSON mark, and offer Complainant’s goods or services without authorization while displaying Complainant’s EMERSON marks on the resolving webpages. Disrupting a complainant’s business while intentionally attempting to attract users to its webpage, for commercial gain, by creating a likelihood of confusion between a disputed domain name and trademark can evince bad faith registration and use. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where Respondent was diverting Internet users searching for Complainant to its own website and likely profiting); see also Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that Respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt Complainant’s business under Policy ¶4(b)(iii)). Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(b)(iii) and (iv).
Complainant claims it is inconceivable Respondent could have registered the <emerson-ch.com> and <china-emerson.com> domain names without actual knowledge of Complainant's mark in light of the fame and notoriety of Complainant's EMERSON mark. This Panel is inclined to agree. Respondent not only used Complainant’s logo, but Respondent copied the look and feel of Complainant’s web site. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). That seems hardly accidental. Respondent registered and used the domain names 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 <emerson-ch.com> and <china-emerson.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, December 7, 2017
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