The Complainant is OK International Inc. of Garden Grove, California, United States of America, represented by Jinjie Chen, China.
The Respondent is zhao ping er of Shangyu, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebN (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2012. On September 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2012. On October 29, 2012, the Center notified the Respondent’s default. On October 30, 2012, an email communication was received by the Center from the Respondent.
The Center appointed Karen Fong as the sole panelist in this matter on November 9, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant, OK International Inc. (“OKI”) is part of Dover Corporation a multi billion dollar diversified global manufacturing company headquartered in the United States which is traded on the New York Stock Exchange. OKI is a leading global supplier of soldering tools and equipment for production assembly. In 1996, OKI acquired Techcon Systems a company established in 1961 to service industrial manufacturing markets. Techcon Systems offers a wide array of fluid dispensing products used in aerospace, automotive, electronics, telecommunications, medical device, solar energy and industrial applications throughout the world. It has subsidiaries in France, Germany, Italy, United Kingdom, China and Japan.
Techcon Systems has used the name “Techcon” as a trade name since the company was established in 1961 and commercially as a trade mark since 1985. The goodwill and reputation it has established was acquired by the Complainant as part of the acquisition in 1996. In addition, the Complainant is the licensee of the registered trade mark rights of the TECHCON trade marks all over the world including the United States and China. The TECHCON registered trade marks are owned by Delaware Capital Formation Inc. (“DCF”) which is an affiliate of Dover Corporation. The earliest trade mark registration for TECHCON dates back to July 2003.
The Respondent registered the Domain Name on January 23, 2008. The Domain Name is connected to a Chinese language website (the “Website”) of a company called Kong Ching Inc. (“KCI”) which offers for sale the Complainant’s products as well as products of its competitors including Chemtools Pty Ltd., Shin-Etsu Chemical Co., Ltd. and Henkel Corporation’s LOCTITE brand. The home page of the Website has an account of the history and information about Techcon Systems and the Complainant and KCI purports to be an authorized agent or distributor of Techcon Systems and the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the TECHCON trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent’s email response was filed two days after the deadline to respond. The Respondent contends that the Complainant does not own the TECHCON trade mark and that the Respondent is authorized to sell Techcon products in China. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith. B. Preliminary Procedural Issue
Paragraph 15(a) of the Rules instructs the 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 this case the Respondent filed an email response to the proceedings two days after the deadline to respond which was well before the Panel received the papers for review. The Panel will accept the Response as other UDRP panels have done as it has not in any way delayed the Panel making a decision (see J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035). C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the mark TECHCON through use and registration that pre date the Domain Name.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Name integrates the Complainant’s registered trade mark TECHCON, the geographical term “china” and generic “.com” domain suffix. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of the geographical term “china” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the TECHCON trade mark in the Domain Name. E.g. N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyP,WIPO Case No. D2011-0260; Oakley, Inc. v. wu bingjie aka bingjie we/ Whois Privacy Protection Service,WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic ,WIPO Case No. D2010-0207.
The Panel finds that the Domain Name is confusingly similar to the TECHCON trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled. D. Rights or Legitimate Interests
The Complainant contends that it has not given the Respondent any license or authorization to use a domain name identical with or similar to the TECHCON trade mark. The Complainant also contends that it has neither appointed the Respondent as the Complainant’s distributor nor supplied products to the Respondent. As the Website purports to sell Techcon products, it is contended that these products may be counterfeits.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions, second edition ("WIPO Overview 2.0") says this:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”
In this case, the Respondent purports to be selling the Complainant’s own goods as well products belonging to competitors of the Complainant. Further the Respondent has misrepresented on the Website that it is an authorised licensee or distributor of the Complainant when this is not the case. This falls foul of the Oki Data principles.
In addition, it may also be selling counterfeit products. There can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark,WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM,WIPO Case No. D2009-1572).
The Respondent’s cryptic email response does not provide any evidence to substantiate its contentions that it is an authorised licensee/distributor of the Complainant or that the Complainant does not have rights to the mark TECHCON. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s marks when it registered the Domain Name. Not only does the Complainant’s trade mark registrations pre date the Domain Name registration, it is clear from the content of the Website that the Respondent intended Internet users to believe that it is authorized or somehow connected to the Complainant.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The use of the Complainant’s trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant’s products. The Domain Name and the content of the Website are calculated to confuse Internet users that the Respondent is an authorised licensee or distributor of the Complainant’s goods when this is not the case.
Moreover, there is a likelihood that the Complainant’s products offered for sale on the Website are counterfeit for the reasons set out in paragraph 6D. The use by a respondent of a domain name which includes a well known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v. Jonathan Schefren,WIPO Case No. D2008-1546 and Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: November 16, 2012
Full & Egal Universal Law Academy