The Complainant is Rockwell Automation, Inc. of Milwaukee, United States of America, represented by Whyte Hirschboeck Dudek S.C., United States of America.
The Respondent is Feng Jian Ping of Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 8, 2013. On August 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 14, 2013 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 14, 2013. On August 13, 2013, the Center sent an e-mail communication to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant requested that English be the language of proceedings. On August 20, 2013, the Respondent submitted a request that Chinese be the language of proceedings post to the commencement of the administrative proceedings.
The Center verified that the Complaint together with the amended 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 August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Response was filed with the Center on September 8, 2013. It was in Chinese.
The Center appointed Karen Fong as the sole panelist in this matter on September 19, 2013. 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 is a manufacturer of industrial automation equipment and systems. It sells its products all over the world. The products include software, hardware, controls and monitoring equipment. It also provide services including consulting, engineering, training and repair and maintenance services relating to industrial automation systems. The Complainant’s products and services are provided under the following trademarks: A-B & Octagon Device, ROCKWELL, ROCKWELL AUTOMATION and ALLEN-BRADLEY. The Complainant has trade mark registrations for these marks in English and Chinese in the United States and China. The earliest trade mark registration dates back to more than 50 years.
The Complainant also owns many domain names incorporating its trademarks including .
The Respondent registered the Domain Name on April 14, 2012. The website connected to the Domain Name (“the Website”) bears a number of the Complainant’s trademarks including the A-B & Octagon Device, ROCKWELL AUTOMATION and ALLEN-BRADLEY. The Respondent sells goods and services in the industrial automation field. At the time of the writing of this decision, the Website did not appear to be active. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its trademarks. 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 contends as follows:
(1) Whilst the Complainant owns trademarks for ROCKWELL AUTOMATION, “A-B”, ALLEN-BRADLEY and ROCKWELL SOFTWARE, it does not have a trade mark for “rockwell-ab”. The Domain Name was registered by the Respondent through legal procedures and has been used for 18 months;
(2) The Domain name was registered legitimately. The Respondent is a legitimate business which pays its taxes, afford employees freedom and human rights. The commercial interests it has in the Domain Name were obtained through hard work and providing value to its customers. There was nothing illegal in this.
(3) The Respondent respects the trade mark rights of the Complainant. The Respondent does not apply the Complainant’s trademarks on its products.
(4) The Complainant’s website and the Website are very different in style and content and customers will therefore not be misled.
(5) To resolve the dispute, the Respondent is prepared to sell the Website or to continue to use it. 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 – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in Part IV of the Complaint that the language of the proceeding should be English. The Complaint has been filed in English. The Respondent is familiar with the English language since the Domain Name is in English and the Respondent has also used a number of the Complainant’s trademarks as detailed in paragraph 4 above all of which are in English. The Respondent also directly links the website to the Complainant’s website, the primary language of which is English.
On the other hand, the Respondent requests that Chinese should be the language of the proceeding. No further reasons were provided.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Panel has considered the Respondent’s submissions that were filed in the Chinese language and therefore the Respondent is not in any way disadvantaged having English as the language of the proceeding. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trademarks ROCKWELL and the A-B & Octagon Device.
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 combination of the two marks ROCKWELL and AB are not registered as a single trade mark, nevertheless they are both separately registered as trademarks of the Complainant and as such the Domain Name would be considered confusingly similar to trademarks in which the Complainant has rights. Alternatively, the Domain Name reproduces the ROCKWELL trade mark in its entirety and is also the dominant part of the Domain Name. The addition of another trade mark of the Complainant comprising two letters of the alphabet “ab” after a hyphen “-” adds to the risk of confusion. For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark or trademarks in which the Complainant has rights. D. Rights or Legitimate Interests
The Complainant contends that the Respondent is not licensed or authorised by the Complainant to use the Complainant’s trademarks. Neither is the Respondent commonly known as ROCKEWELL or AB. The Respondent does not have any trade mark registrations for either of the trademarks.
The Website shows that the Respondent is selling products and services in the automation industry. Although the Website shows the Complainant’s trademarks and makes reference to the Complainant, it is not clear whether the Respondent is also selling the Complainant’s products in addition to competing products either of other brand owners or its own brand products.
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 is not an authorized dealer, reseller or repairer. Nonetheless, the Domain Name is made up of the Complainant’s trademarks and the Complainant’s trademarks and name appear prominently on the Website. It is clear to the Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in paragraph 2.3 of the WIPO Overview 2.0 “… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark.”
This is such a case.
The Respondent’s contentions in the Response do not satisfactorily address how in the face of the above that it has any rights or legitimate interests in respect of the Domain Name.
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 must have been aware of the Complainant’s ROCKWELL and the A-B & Octagon Device trademarks when it registered the Domain Name. The fact that the Domain Name incorporates both trademarks and the Website is peppered with references to the Complainant as well as the Complainant’s other trademarks ROCKWELL AUTOMATION and ALLEN-BRADLEY is in the Panel’s view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The use of two of the Complainant’s trademarks or 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 which includes links to the Complainant’s website and a number of the Complainant’s trademarks is calculated to confuse Internet users that the Respondent is an authorised repairer of the Complainant’s goods when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent’s Website and the products sold on it were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent’s registration and use of the Domain Name are in bad faith. 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 disputed domain name be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: October 1, 2013
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