national
arbitration forum
DECISION
Telex Communications, Inc. v. Jinzheng Net
Claim Number: FA0611000833071
PARTIES
Complainant is Telex Communication, Inc. (“Complainant”), represented by Renee
S. Kraft, of 200 South Sixth Street, Suite 4000, Minneapolis, MN
55402-1425. Respondent is Jinzheng Net
(“Respondent”), Guangzhoushitianhequ,
Guangzhoushi, BJ 510630 CN.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <usa-ev.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a
DNS.COM.CN.
PANEL
The undersigned certifies that he or
she has acted independently and impartially and to the best of his or her
knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on November 6, 2006;
the National Arbitration Forum received a hard copy of the Complaint on November 7, 2006.
On November 14, 2006,
BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN confirmed by e-mail to
the National Arbitration Forum that the <usa-ev.com>
domain name is registered with BEIJING
INNOVATIVE LINKAGE TECHNOLOGY LTD.
d/b/a DNS.COM.CN and that Respondent is the current registrant of the name. BEIJING
INNOVATIVE LINKAGE TECHNOLOGY LTD.
d/b/a DNS.COM.CN has verified that Respondent is bound by the BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS.COM.CN registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On November 16, 2006,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of December 6, 2006
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts, and
to postmaster@usa-ev.com by e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On December 12, 2006, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) as Panelist.
Having reviewed the communications
records, the Administrative Panel (the "Panel") finds that the
National Arbitration 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration 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.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<usa-ev.com> domain name is
confusingly similar to Complainant’s EV mark.
2. Respondent
does not have any rights or legitimate interests in the <usa-ev.com> domain name.
3. Respondent
registered and used the <usa-ev.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Telex Communications, Inc.,
is a maker of professional audio equipment, including microphones, amplifiers
and speakers. Complainant has
continuously used the EV mark in connection with these products since at least
1944. Complainant’s main website is
located at the <electrovoice.com> domain name.
Complainant has registered the EV mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 597,559 issued November 2, 1954)
and with numerous other trademark authorities around the world, including in China,
where Respondent resides (Reg. No. 1,992,643 issued March 7, 2005).
Respondent registered the <usa-ev.com> domain
name on October
6, 2006. Respondent is
selling competing products at the disputed domain name, including speakers and
amplifiers. Respondent’s products also
bear Complainant’s stylized EV mark and the website displays the text,
“www.USA-EV.com and [Complainant] are same enterprise, are
famous brand in audio and video all over the world.”
DISCUSSION
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."
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(e), 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 (Nat. Arb.
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); 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.”).
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.
Identical and/or Confusingly Similar
Through its numerous trademark registrations for the EV mark
around the world, including in China,
where Respondent resides, Complainant has established rights in the EV mark
under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb.
Forum Nov. 29,
2005) (“The Panel finds from a preponderance of the evidence that
Complainant has registered its mark with national trademark authorities. The Panel has determined that such
registrations present a prima facie
case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see
also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005)
(“Complainant’s numerous registrations for its HONEYWELL mark throughout the
world are sufficient to establish Complainant’s rights in the HONEYWELL mark
under the Policy ¶ 4(a)(i).”).
The <usa-ev.com> domain name contains
Complainant’s entire EV mark with the mere addition of the geographic
identifier “usa”
and a hyphen. Neither alteration is a
distinguishing difference. Accordingly,
the Panel finds the <usa-ev.com> domain name to be confusingly
similar to the mark pursuant to Policy ¶ 4(a)(i). See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name
<cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also JVC Americas Corp. v.
Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by
the respondent, <jvc-america.com>, is substantially similar to, and
nearly identical to the complainant's JVC mark); see also Health Devices
Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he
addition of punctuation marks such as hyphens is irrelevant in the
determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel concludes that Complainant has
satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent lacks rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO May
14, 2001) ( “Proving that the Respondent
has no rights or legitimate interests in respect of the Domain Name requires
the Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient for the Complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach
is for respondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain name. See
Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”); see also Geocities
v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the panel with evidence to suggest
otherwise). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the <usa-ev.com>
domain name under the name “Jinzheng Net,” and there is no other evidence in
the record suggesting that Respondent is commonly known by the disputed domain
name. Consequently, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
See Broadcom Corp.
v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because the respondent is not commonly known by
the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also Instron Corp. v. Kaner, FA 768859
(Nat. Arb. Forum Sept.
21, 2006) (finding that the respondent was not commonly
known by the <shoredurometer.com> and <shoredurometer.com> domain
names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a
Electromatic Equip't as the registrant of the disputed domain name and there
was no other evidence in the record to suggest that the respondent was commonly
known by the domain names in dispute).
Furthermore, Respondent is using the <usa-ev.com>
domain name to redirect Internet users to its own website selling amplifiers
and speakers in direct competition with Complainant. In Am. Tool &
Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002),
the respondent registered a domain name confusingly similar to the
complainant’s EZ-HITCH mark and used the domain name to sell products in direct
competition with the complainant. The
panel stated, “Respondent has attempted to trade opportunistically on
Complainant’s established goodwill in the industry by emulating Complainant’s
mark and product when registering a confusingly similar domain name.” The panel
thereafter held that the respondent’s actions of “expropriating Complainant’s
mark and business” did not constitute a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii).
Because Respondent has engaged in similar conduct, the Panel finds that Respondent
is not using the <usa-ev.com> domain name in connection with 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 Carey Int’l, Inc. v.
Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the
respondent’s use of disputed domain names to market competing limousine
services was not a bona fide offering of goods or services under Policy
¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in
order to profit from the mark).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Because Respondent is using the <usa-ev.com>
domain name to redirect Internet users to its own competing website, the Panel
finds that Respondent has registered and is using the disputed domain name in
order to disrupt Complainant’s business under the EV mark, which constitutes
bad faith according to Policy ¶ 4(b)(iii).
See Marriott Int’l, Inc. v. MCM
Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005)
(“The Respondent is a travel agency and thus operates in the same business as
the Complainant. The parties can therefore be considered as competitors.
The Panel thus finds that the Respondent registered the domain name primarily
for the purpose of disrupting the business of a competitor, which constitutes
evidence of registration and use in bad faith under Policy 4(b)(iii).”); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel also finds
that Respondent’s diversionary use of the <usa-ev.com> domain name
for commercial gain violates Policy ¶ 4(b)(iv), for by linking the domain name
to a competing website, Respondent is taking advantage of the confusing
similarity between the disputed domain name and Complainant’s EV mark in order
to profit from the goodwill associated with the mark. See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see
also Toyota Motor Sales U.S.A. Inc. v.
Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003)
(“Respondent used <land-cruiser.com> to advertise its business, which
sold goods in competition with Complainant. This establishes bad faith as
defined in Policy ¶ 4(b)(iv).”).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(iii).
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 <usa-ev.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable
Paul A. Dorf (Ret.), Panelist
Dated: December 27, 2006
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