DECISION

 

Beemer Precision, Inc. v. JIN

Claim Number: FA2409002116341

 

PARTIES

Complainant is Beemer Precision, Inc. ("Complainant"), represented by Bruce A. Herald, Pennsylvania, USA. Respondent is JIN ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oilitebronze.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 19, 2024; Forum received payment on September 19, 2024.

 

On September 19, 2024, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to Forum that the <oilitebronze.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 September 24, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of October 15, 2024 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@oilitebronze.com. Also on September 24, 2024, the Chinese and English 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 in Chinese and English.

 

On October 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In support of its request, Complainant notes that the disputed domain name resolves to a website that is almost entirely in English, "contains English product descriptions, technical information in English, numerous company news stories in English, an 'About Us' page in English, a blog in the English language, contact information in English and an inquiry page that invites English language inquiries." The Panel notes Complainant's submission of screenshots of Respondent's website and these do appear entirely in the English language. Finally, Forum has provided notice of these proceedings to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO Oct. 15, 2008) the Panel held that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English". In light of the fact that the submitted screenshots of Respondent's website display content entirely in English and taking into account its default in this case and the delay and further expense that would be caused from requiring the Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a long-established company that is well known in the bearing business. Its customers, prospective customers, others in the bearing industry, and consumers identify Complainant's self-lubricating sintered metal bearings as "Oilite" bearings. Complainant's use of the "Oilite" mark dates back to the 1930s and numerous registrations have been obtained for the mark including United States Reg. No. 1777650 dated June 22, 1993 and China Reg. No. 7965767 date February 20, 2021 and others.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns rights in the OILITE trademark and the <oilitebronze.com> domain name is confusingly similar to Complainant's mark despite its addition of the descriptive word "bronze" and the ".com" TLD;

-       Respondent has no rights to the mark, it is not commonly known by the disputed domain name, and its operation of a website claiming to sell products which are either sourced from or competitive to Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; and

-       Respondent's activities seek commercial gain based on a disruption of Complainant's business and a likelihood of confusion with the OILITE mark and the <oilitebronze.com> domain name was registered and is used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the OILITE mark through registrations with the trademark offices of various countries as noted above. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") Complainant provides screenshots of its trademark registration certificates from the United States of America and China and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the claimed mark under Policy ¶ 4(a)(i).¹

 

Next, Complainant argues that Respondent's <oilitebronze.com> domain name is confusingly similar to the OILITE mark because it incorporates the entirety of the mark and adds the descriptive word "bronze" and the ".com" TLD. The addition of a generic or descriptive term to a mark typically does not negate any confusing similarity between a disputed domain name and the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term "security" to the complainant's VANCE mark, which described the complainant's business, the respondent "very significantly increased" the likelihood of confusion with the complainant's mark). Complainant's mark is plainly recognizable in the disputed domain name and addition of the word "bronze" and the ".com" TLD does not detract from the meaning of the mark. As such, the Panel finds that the <oilitebronze.com> domain name is confusingly similar to the OILITE mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

Apparently in reference to Policy ¶ 4(c)(ii), Complainant asserts that it has not given Respondent permission to use the OILITE mark. Furthermore, the Panel notes that it is well accepted that WHOIS information may be considered when determining whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). In addition, where there is no evidence to indicate that a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interests in the disputed 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)"); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS Registrar verification for the <oilitebronze.com> domain name lists the Registrant as "JIN" and Complainant states that it "has not licensed the mark to Respondent for use in Respondent's domain names or for any other use." Based on presented evidence, the Panel sees no ground upon which to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, implicating Policy ¶ 4(c)(i), the Complaint asserts that Respondent does not use its domain in the bona fide sale of goods or services as the products offered on its website are not those manufactured by Complainant. Rather, it claims that Respondent uses the disputed domain name to divert and deceive customers by offering competing products. Passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Here, Complainant provides screenshots of the <oilitebronze.com> website which, although displaying the name "Jintai Hardware", further includes many images of bearings, bushings, washers, and others, many of which include mention of the OILITE mark (e.g., "oilite bearing", "oilite sleeve bearings", and "oilite thrust washer"). Other products are described as "FU Oil sintered bushing" and make no mention of the OILITE mark. Complainant states that "[s]elf-lubricating sintered metal bearings are available from many sources" but goes on to note that it "manufactures all 'Oilite' bearings and does not contract manufacturing to any other entities" and, as noted above, that it "has not licensed the mark to Respondent…" Finally, it states that "[n]one of Beemer's authorized distributors sell 'Oilite' bearings to Respondent or Hunan Jintai Hardware and, upon information and belief, none of the bearings sold by Hunan Jintai Hardware are manufactured by Beemer." From this evidence, the Panel finds it highly likely that the disputed domain name and Respondent's website were created to sell products that do not originate with Complainant but, rather, compete with Complainant's own offerings. As such, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is also not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant's rights in its OILITE mark at the time it registered the <oilitebronze.com> domain name. Some attribution of knowledge of a complainant's trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) ("Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration"); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where "Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.") Complainant provides one screenshot from its <oilite.com> website as well as a product catalog but this evidence is rather minimal in support of Complainant's claims that "[t]he mark is well known in industry and to the general public. It is a famous mark." However, Respondent's use of the <oilitebronze.com> domain name and the repeated appearance of the OILITE mark in promoting bearing products on its website is far more convincing to demonstrate that Respondent was aware of Complainant's mark at the time it registered the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("the Panel here finds actual knowledge through the name used for the domain and the use made of it.")

 

Next, the Complaint asserts that Respondent is likely selling counterfeit products in competition with Complainant and is seeking commercial gain based on confusion with the OILITE mark. This sets out claims for bad faith under Policy ¶ 4(b)(iii) and (iv). See Zapier, Inc. v. Manohar Chapalamadugu / Agile CRM Inc., FA 2049262 (Forum July 23, 2023) (where the disputed "domain name resolves to a website that purports to do exactly what Complainant does", the Panel found that Respondent is "using the disputed domain name to offer competing services under the same mark, and thus, attracting unsuspecting Zapier customers to its infringing website, and disrupting and damaging Zapier's business.") Also Shopify Inc. v. Fahad Tariq, 22799-UDRP (CIIDRC Apr. 23, 2024) (bad faith found under Policy ¶ 4(b)(iv) where Respondent's online shopping service infringed on Complainant's trademark rights). Here, Complainant has, without rebuttal, stated that genuine OILITE products are only manufactured by itself and that none of its authorized distributors sell genuine product to Respondent or Hunan Jintai Hardware. Thus, a strong case has been made that Respondent uses the <oilitebronze.com> domain name and website to offer bearing products that compete with and infringe upon Complainant's own products and its registered OILITE trademark. Respondent's use of the exact same mark for the same products as are sold by Complainant sets out a situation that involves competition and trademark infringement. By a preponderance of the evidence, the Panel finds that the <oilitebronze.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(iii) and (iv).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <oilitebronze.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven M. Levy, Esq., Panelist

Dated: October 19, 2024