Balon Corporation and Valve Innovations, LLC v. 谢银吉
Claim Number: FA2201001979424
Complainant is Balon Corporation and Valve Innovations, LLC (“Complainant”), represented by Chase C. Webb of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is 谢银吉 (“Respondent”), 中国.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bolon-valves.com>, registered with Xin Net Technology Corporation.
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2022; the Forum received payment on January 6, 2022.
On January 14, 2022, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <bolon-valves.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 24, 2022, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 14, 2022 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@bolon-valves.com. Also on January 24, 2022, the Chinese language 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 February 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Valve Innovations LLC (“Valve”) and Balon Corporation (“Balon”). The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants argue that Balon obtained the U.S. Registrations of the BALON marks, assigned the registrations to Valve, who licensed Balon the right to use the mark, and that this shows a sufficient nexus between the two parties for the purposes of Forum’s Supplemental Rule 1(e).
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it will therefore treat them all as a single entity in this proceeding. The proceeding may therefore go forward on that basis and the Complainants will be collectively referred to as “Complainant.”
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Chinese language, thereby giving rise to the presumption that the language of the proceeding is Chinese. However, the Panel may decide, pursuant to Rule 11(a), that the language of the proceeding should be a language other than the language of the Registration Agreement, 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 the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. Complainant contends correctly that Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents into English.
Pursuant to UDRP Rule 11(a), the Pane therefore finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering all the circumstances, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant is a valve and automotive parts company. Complainant submits that it has rights in the BALON mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,033,618, registered Feb. 17, 1976). See Compl. Exs. 1 – 3. Respondent registered the <bolon-valves.com> domain name on February 24, 2021. Respondent’s <bolon-valves.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety, switches the “a” with an “o”, and adds the word “-valves” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <bolon-valves.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its BALON mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and purports to offer competing goods.
Respondent registered and uses the <bolon-valves.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and offering competing goods on the disputed domain name’s resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainat is a United States company engaged in the supply of valves and automotive parts.
2. Complainant has established its trademark rights in the BALON mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,033,618, registered Feb. 17, 1976).
3. Respondent registered the <bolon-valves.com> domain name on February 24, 2021.
3. Respondent has used the domain name to pass itself off as Complainant and to purport to offer competing goods.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the BALON mark through its registrations with the USPTO (e.g. Reg. 1,033,618, registered Feb. 17, 1976). See Compl. Exs. 1 – 3. Registration with the USPTO is generally sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has established it rights in the BALON mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BALON mark. Complainant argues that Respondent’s <bolon-valves.com> domain name is identical or confusingly similar to Complainant’s BALON mark. Under Policy ¶ 4(a)(i), incorporating a slightly misspelled version of a domain name and adding a hyphen, a word related to a Complainant’s business, and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). The disputed domain name incorporates Complainant’s BALON mark, swaps the letter “a” in BALON for an “o”, and adds a hyphen, the word “valve” (which is related to Complainant’s business), and the “.com” gTLD. It is therefore clear that the substance of the domain name is a virtual copy of Complainant’s mark with a few alterations designed to mislead the internet user. Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BALON mark, adding the generic word “valves” with a hyphen preceding it and swapping the “a” of BALON for an “o”, pretending that the domain name was an official domain name of Complainant dealing with valves made by Complainant, which of course is false;
(b) Respondent registered the <bolon-valves.com> domain name on February 24, 2021;
(c) Respondent has used the domain name to pass itself off as Complainant and to purport to offer competing goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <bolon-valve.com> domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Complainant is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “xie yin ji”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its BALON mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <bolon-valves.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and offer competing goods or services is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. 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 General Motors LLC v. MIKE LEE, FA 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).”). Complainant provides detailed and persuasive evidence including screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and purports to sell similar products as Complainant. See Compl. Ex. 8. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent disrupts Complainant’s business for commercial gain with the <bolon-valves.com> domain name. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing goods or services is generally accepted as evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s mark and purports to sell similar products as Complainant. See Compl. Ex. 8. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bolon-valves.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: February 22, 2022
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