Cummins Inc. v. jin chen / chen jin
Claim Number: FA2306002047210
Complainant is Cummins Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is jin chen / chen jin (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <enginecummins.com> and <fotoncumminsparts.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 1, 2023; Forum received payment on June 1, 2023.
On June 2, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <enginecummins.com> and <fotoncumminsparts.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2023 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@enginecummins.com, postmaster@fotoncumminsparts.com. Also on June 6, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant contends as follows:
Complainant is a global power leader comprised of complementary business units that design, manufacture, distribute and service engines and related technologies.
Complainant asserts rights in the CUMMINS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies.
The <enginecummins.com> and <fotoncumminsparts.com> domain names are identical or confusingly similar to Complainant’s trademark because both the disputed domain names incorporate the entire CUMMINS mark and merely add descriptive terms that are related to Cummins and its actual affiliates as well the generic top level domain (“gTLD”) “.com”. Specifically, the <fotoncumminsparts.com> domain name adds the terms “Foton” and “parts” and the “.com” gTLD. Also, the <enginecummins.com> domain name adds the term “engine” and the “.com” gTLD.
Respondent lacks rights or legitimate interests in the at-issue domain names. Respondent is not commonly known by either at-issue domain name, nor has Respondent been authorized by Complainant to use the CUMMINS mark. Additionally, Respondent has not used the at-issue domain names in connection with a bona fide offering of goods or services. Rather, the at-issue domain names are currently inactive. Previously, however, the domain names resolved to websites that impersonated Complainant and offered competing goods for sale.
Respondent registered and uses the domain names in bad faith. Respondent is creating a likelihood of confusion with Complainant’s mark. Also, the domain names resolved to websites featuring competing products. Lastly, Respondent had actual knowledge of Complainant’s rights in the CUMMINS trademark prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CUMMINS trademark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CUMMINS trademark.
Respondent used the at-issue domain names to pass itself off as Complainant and offer competing goods, and now holds the domain names passively.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the CUMMINS mark, as well as its ownership of any additional registration for such mark with any other trademark registrar, demonstrates Complainant’s rights in a mark for the purposes of Policy ¶ 4 (a)(I). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <enginecummins.com> and <fotoncumminsparts.com> domain names each contain Complainant’s entire CUMMINS trademark and include suggestive terms i.e. “engine”, “foton” and “parts”, with all followed by the top-level domain name “.com”. The differences between Respondent’s domain names and Complainant’s trademark fail to distinguish either <enginecummins.com> or <fotoncumminsparts.com> from Complainant’s CUMMINS mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <enginecummins.com> and <fotoncumminsparts.com> domain names are each confusingly similar to Complainant’s CUMMINS trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also, MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names identifies the domain names’ nominal registrants as “jin chen” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by either at-issue domain name or by CUMMINS. The Panel therefore concludes that Respondent is not commonly known by <enginecummins.com> or <fotoncumminsparts.com> for the purposes of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Respondent currently holds the at-issue domain names passively. Previously, Respondent used <enginecummins.com> and <fotoncumminsparts.com> to pass itself off as Complainant. The <enginecummins.com> and <fotoncumminsparts.com> websites featured Complainant’s well-known CUMMINS mark and C logo and purported to offer competing, similar, and/or related products to those offered by Complainant. Neither disposition of the domain names constitutes either 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 CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”); see also, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each of the at-issue domain names under Policy ¶4(a)(ii).
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent has acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent used <enginecummins.com> and <fotoncumminsparts.com> to address websites adorned with Complainant’s trademark and logo and there purported to offer goods that compete with engine products and parts offered under the CUMMINS trademark. Such use of the at-issue domain names is disruptive to Complainant’s business and generates confusion among internet users by creating a false sense of affiliation between the domain names and Complainant. Respondent’s use of the domain names to pass itself off as Complainant and offer competing products demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also, Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); 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.”).
Respondent currently holds its confusingly similar <enginecummins.com> and <fotoncumminsparts.com> domain names passively. Doing so further indicates Respondent’s bad faith registration and use of such domain name. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CUMMINS mark when it registered <enginecummins.com> and <fotoncumminsparts.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of the CUMMINS trademark; from Respondent’s incorporation of Complainant’s trademark into the at-issue domain names along with terms suggesting Complainant’s related business interests; and from Respondent’s use of the domain names to impersonate Complainant and inappropriately capitalize on the CUMMINS trademark as discussed elsewhere herein. Respondent’s registration and use of the at-issue domain names with knowledge of Complainant’s rights in CUMMINS further shows Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enginecummins.com> and <fotoncumminsparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 6, 2023
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