Emerson Electric Co. v. qinhan jia / Man Si Di Ke Ji (Xiang Gang) You Xian Gong Si
Claim Number: FA1810001810233
Complainant is Emerson Electric Co. (“Complainant”), Missouri, USA. Respondent is qinhan jia / Man Si Di Ke Ji (Xiang Gang )You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emersonasia.com>, registered with Bizcn.com, Inc.
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.
Charles A. Kuechenmeister as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2018; the Forum received payment on October 3, 2018.
On October 11, 2018, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <emersonasia.com> domain name (the “Domain Name”) is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 October 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 6, 2018 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@emersonasia.com. Also on October 17, 2018, 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 November 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE
Language of the Proceedings
The registration agreement for the Domain Name is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant requests that these proceedings be conducted in English. UDRP panels have interpreted Rule 11 (a) as follows: In FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001), the panel found it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English. Panels have also held that a proceeding should be conducted in a language in which both parties can communicate and be understood. 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), 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.”).
Complainant advances a number of reasons why this proceeding should be conducted in English. It argues (i) that the Respondent has facility with the English language, and (ii) that conducting these proceedings in a language other than English would cause Complainant to incur significant additional burden and delay to translate the Complaint and other documents. The Domain Name is based upon the name of an American company. Although the web site resolving from it is written mostly in Chinese, the names of many American, European and Japanese companies appear in English, as does the name of the apparent sponsor of the web site, Mansdi Technology (HK) Co., Limited, and other words and phrases e.g., “categories,” “products,” “operator interface,” “contact us” and “marketing.” See, Complaint Exhibit C. From this it appears that Respondent is familiar with the English language. Further, while the Amended Complaint is written in English, one copy of the Written Notice of the Complaint sent to Respondent by Forum is written in Chinese and Respondent has filed no protest or objection to the Complaint or to these proceedings being conducted in English. For these reasons, the Panel determines that this proceeding will be conducted in the English language.
A. Complainant
Complainant uses and has used the EMERSON mark to provide and market its goods and services since as early as 1890. It has registered its mark with the United States Patent and Trademark Office (“USPTO”) and with the State Administration for Industry and Commerce of the People’s Republic of China (“SAIC”). Respondent’s Domain Name is confusingly similar to the mark as it incorporates Complainant’s EMERSON mark in its entirety, merely adding the geographic term “asia” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the Domain Name. Respondent is not sponsored by or affiliated with Complainant in any way, Complainant has not given Respondent permission to use its mark in any manner, and Respondent is not commonly known by the Domain Name. Further, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using it to offer products and services that compete directly with Complainant.
Respondent registered and is using the Domain Name in bad faith. Respondent uses the Domain Name to offer products and services that compete directly with Complainant for commercial gain. Finally, Respondent had actual knowledge of Complainant’s EMERSON mark and business prior to registering the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. 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), Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds as follows with respect to the matters at issue herein.
Complainant registered its EMERSON mark with the USPTO (Reg. No. 111, 931) on August 15, 1916. See, Amended Complaint Ex. A. Registration of a mark with the USPTO has routinely been held to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”).
Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, altering it only by adding the geographic term “asia” and the gTLD “.com”. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶4(a)(i). 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.). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. 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).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the EMERSON mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) it is not affiliated with, nor does it have permission from Complainant to use the EMERSON mark, (ii) it is not commonly known by the Domain Name, and (iii) it is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to offer and sell goods which compete directly with the goods sold by the complainant, as Respondent is doing, cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to the information provided to Forum by bizcn.com, the registrar of the Domain Name, the registrant is “qinhan jia,” and the registrant organization is “Man Si Di Ke Ji (Xiang Gan) You Xian Gong Si.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never licensed or authorized Respondent to use its EMERSON mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Amended Complaint Exhibit C is a screenshot of the web site resolving from the Domain Name. It features pictures of various items of electronics equipment being offered for sale, identifying two of them by the brand names Provox and Honeywell. A panel on the left side of the screen lists a number of brand names of manufacturers of electronic equipment, including Complainant’s name and others such as Honeywell and Mitsubishi. Although the web page is written mostly in Chinese, it is obvious that the purpose of the page is to offer electronic equipment, manufactured for the most part by firms other than Complainant, for sale. Using a confusingly similar domain name to sell competing goods or services does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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 of service on your web site or location.
The evidence of Respondent’s use of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Name to sell competing goods. This conduct amounts to attracting, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site and fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Finally, Complainant has a world-wide presence as a diversified global manufacturing and technology company. According to the Complaint, it owns 20 factories and 15 engineering centers in China and counts China as its second largest market. From this and from the close similarity between Complainant’s mark and Respondent’s Domain Name, it is obvious that Respondent had actual knowledge of Complainant’s EMERSON mark on July 17, 2017, when it registered the Domain Name. See, Amended Complaint Exhibit B for registration date. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <emersonasia.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Date: November 9, 2018
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