The Complainant is Cummins Turbo Technologies Limited of West Yorkshire, United Kingdom of Great Britain and Northern Ireland, represented by Dentons US LLP, United States of America.
The Respondent is Wang Tian of Dandong, Liaoning, China. 2. The Disputed Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on August 22, 2014. On August 20, 2014, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On August 22, 2014, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Chinese, and the proceedings commenced on August 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on September 24, 2014. 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 was founded in 1952 and has become the market leader for turbochargers in the commercial vehicle market, with a worldwide network of technical, manufacturing and service centers, including, without limitation, sales and technical support centers in Brazil, China, India, the Netherlands, the United Kingdom and the United States. The Complainant sells HOLSET branded turbochargers throughout the world, in every continent, with the exception of Antarctica. The Complainant employs over 3,000 people worldwide and is a subsidiary of Cummins Inc., a global power leader incorporating complementary business units that design, manufacture, distribute and service engines and related technologies, including fuel systems, controls, air handling, filtration, emission solutions, and electrical power generation systems.
The Complainant, under its prior name, Holset Engineering Co. Ltd., has manufactured turbochargers since the 1950s. The Complainant’s HOLSET branded turbochargers are well known in the industry, having developed a reputation of improved engine efficiencies and emissions reduction in on‐ and off‐highway, marine and power generation applications worldwide.
The Complainant or its related company Cummins Ltd. owns three United Kingdom trademark registrations for the mark HOLSET, the first of which was registered in 1966. The Complainant thereafter used its HOLSET trademark in many other countries, including in the United States since at least as early as 1974. The Complainant or its related company Cummins Ltd. owns United States registrations for the marks HOLSET, HOLSET & Design and HOLSET VGT, with its earliest registration for HOLSET issued in the United States in 1989. The Complainant also owns Chinese trademark registrations for the marks HOLSET, HOLSET & Design, HOLSET TURBOCHARGERS & Design, HOLSET TURBOCHARGERS & Design (in Chinese characters). Its earliest registration for HOLSET in China was issued in 1988.
The Complainant also owns trademark registrations and pending applications for the mark HOLSET in over 45 jurisdictions in addition to China, the United Kingdom, and the United States. The Complainant has expended significant time, effort and money promoting and marketing its Holset brand.
The disputed domain name was registered by the Respondent on July 11, 2011. 5. Parties’ Contentions A. Complainant
First, the Complainant asserts that the disputed domain name is identical or confusingly similar to its marks based on the following reasons:
1. The Complainant and its related company Cummins Ltd. own trademark registrations for the trademark HOLSET, in the United Kingdom, United States and China, as well as over 45 other countries. As a result, the Complainant has established rights in the registered mark HOLSET under paragraph 4(a)(i) of the Policy.
2. The disputed domain name consists of the entire registered mark HOLSET owned by the Complainant with the addition of the letter “l” after the third letter of HOLSET, followed by “urbo”.
3. The first portion of the disputed domain name “hollset” is phonetically identical to the Complainant’s HOLSET mark in a number of languages, including English. Furthermore, persons searching for the Complainant’s website may mistakenly type “Holset” as “Hollset”. Such changes do not differentiate the disputed domain name from the Complainant’s HOLSET mark and HOLSET formative marks.
4. The second portion of the disputed domain name adds “urbo” following the letter “t” of “hollset”. This portion is pronounced as “turbo”, which is well known in the industry as a shorthand terminology to refer to a turbocharger. The Complainant sells HOLSET branded turbochargers. Therefore, the second portion of the disputed domain name describes the Complainant’s goods sold under the HOLSET brand. The Respondent cannot avoid a finding that the disputed domain name is confusingly similar to the Complainant’s trademark by including a term that describes the goods offered by the Complainant under its mark. The disputed domain name also includes a generic Top-Level Domain (“gTLD”), “.com”.
5. The addition of the Top-Level Domain is a requirement of domain name registrations and does not serve to identify a specific service provider. A domain name must include some form of Top-Level Domain. Therefore, the differences between the disputed domain name and the Complainant’s HOLSET mark are without legal significance.
Second, the Complainant asserts that the Respondent has no rights or any legitimate interests in respect of the disputed domain name on the following grounds:
1. The Respondent is not, and never was, a licensee or business associate of the Complainant or any of its affiliates, nor is it otherwise authorized by the Complainant to use its HOLSET mark in any manner, including as a domain name.
2. On information and belief, the Respondent is not and never was known by, or doing business under the name “Holset” or “Hollset”.
3. The Respondent uses the disputed domain name to sell turbochargers, including the Complainant’s competitors’ turbochargers and the Complainant’s turbochargers without authorization.
4. The Respondent simply has no interest in the HOLSET mark other than reaping commercial gain from misleading customers seeking the Complainant’s website and diverting them to the Respondent’s website where turbochargers that are competitive to the Complainant’s HOLSET turbochargers are sold.
5. The Respondent’s use of the disputed domain name improperly trades on the Complainant’s substantial goodwill in the HOLSET mark and creates a likelihood of confusion among the public by falsely suggesting that the Complainant or its HOLSET turbocharger brand is the source, sponsor, affiliate or endorser of the Respondent and/or the website at the disputed domain name and/or the turbochargers of the Complainant’s competitors. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent.
Third, the Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith on the following grounds:
1. The Respondent is deliberately using the disputed domain name to create confusion and to mislead customers into falsely believing that a relationship of source, sponsorship, affiliation or endorsement exists between the Complainant and the website located at the disputed domain name.
2. The Respondent uses the disputed domain name in a manner that is likely to capture traffic from customers looking for the Complainant’s website and to direct such customers instead to the Respondent’s website operated at the disputed domain name.
3. The website at the disputed domain name sells turbochargers, the majority of which compete with the Complainant or its products, from which the Respondent likely obtains commercial gain. This is an intentional attempt by the Respondent to use the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s HOLSET mark.
4. The Respondent is aware of the Complainant’s HOLSET mark because it sells turbochargers, and the HOLSET brand of turbochargers is long-established and well-known in the industry. Further, the Respondent is aware of the Complainant’s HOLSET mark because the Respondent purports to sell Cummins turbochargers manufactured by “HOLSET” on the website to which the disputed domain name resolves.
5. The Respondent also may have been aware of the Complainant’s HOLSET mark, actually or constructively, based on the Complainant’s numerous trademark registrations throughout the world, including in China where the Respondent is located.
6. The Respondent’s only purpose for and use of the disputed domain name is to misdirect customers who are looking for the Complainant's website to the Respondent’s website at the disputed domain name for the Respondent’s improper benefit. Use of the disputed domain name to divert traffic from the Complainant’s website in this manner is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceedings should be in English. The Complainant has submitted a request that English should be the language of the present proceeding for the following reasons:
(i) The Respondent has demonstrated familiarity with and a preference for the English language because the website that the disputed domain name resolves to contains content exclusively in the English language.
(ii) The Complainant’s language is English.
Based on the above, the Complainant requests that the proceedings be held in English.
After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language for the present proceeding shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons: (i) The Panel’s discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case. (ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be the English language. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English; (b) the website which was connected to the disputed domain name was in English; (c) the Complainant has exhausted all ways to communicate with the Respondent but to no avail; (d) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English. 6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the HOLSET mark in relation to turbochargers in the United Kingdom, the United States, China and in many countries in the world. The Panel finds that the Complainant has rights and continues to have such rights in the relevant HOLSET mark.
The disputed domain name consists of (a) the Complainant’s mark HOLSET in its entirety, with the word “holset” misspelled as “hollset”. In addition, the term “urbo” is added to the letter “t” in “hollset” to form read “turbo”. Finally, the gTLD “.com” is added to it.
In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s HOLSET mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.
The Panel finds that a prima facie case has been made out by the Complainant that the term “hollseturbo” is confusingly similar to the Complainant’s HOLSET trademark, given that the distinctive portion of the Complainant’s mark has been reproduced in its entirety in the disputed domain name. A misspelling of the Complainant’s mark in the disputed domain name is not adequate to distinguish the disputed domain name from the Complainant’s mark. Furthermore, the addition of a generic word such as “turbo” does not serve to distinguish the disputed domain name from the Complainant’s trademark. On the contrary, as the Complainant is in the business of manufacturing and selling turbochargers, the addition of the word “turbo” heightens the possibility of confusion of the consumers as it associates with the Complainant’s core business. It is also generally accepted that the addition of gTLD such as “.com” is not adequate as a distinguishing factor.
Therefore, unless the Respondent is able to offer to plausible explanations as to his choice of the term “” for his domain name, the Panel accepts the Complainant’s contention that the term was chosen with the Complainant’s trademark HOLSET in mind and the addition of the terms “turbo” and “.com” do not eliminate the identity or at least the similarity between the Complainant’s trademark and the disputed domain name.
Unfortunately, the Respondent has offered no explanation of his choice of the disputed domain name. Thus, the Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
The burden of proof on this element lies with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that the Complainant has made out a prima facie showing and notes that the Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.
Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:
1. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of “hollseturbo” in his/her business operations.
2. There was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark.
3. There is no indication that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the website which the disputed domain name points to sells turbochargers, the majority of which compete with the Complainant or its products and from which the Respondent is likely to obtain commercial gain.
4. The Complainant and its HOLSET marks enjoy substantial reputation in many countries including China, with regard to its turbochargers.
Consequently, in the absence of contrary evidence and satisfactory explanations from the Respondent, the HOLSET mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The above circumstances are indicative of registration and use of a disputed domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a disputed domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the substantial reputation of the Complainant and its HOLSET mark, as well as the market presence of the Complainant in numerous countries including China, the Panel finds that it is highly unlikely that the Respondent would not have had actual or constructive notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. A simple search on the Internet would reveal the presence of the Complainant’s trademark and its domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual or constructive notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register the disputed domain name that is identical or confusingly similar to the Complainant’s trademark and where the mark in question has through substantial use acquired an extensive reputation and notoriety, a reasonable conclusion is that the mark is not one that the Respondent could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain name was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain name for purposes of bona fide offering of goods and services over the Internet. On the contrary, the Respondent has linked the disputed domain name with a website which sells turbochargers, the majority of which compete with the Complainant or its products and from which the Respondent is likely to obtain commercial gain. In this regard, the Panel finds that the Respondent has not provided any plausible explanation.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website under paragraph 4(b)(iv) of the Policy. The Panel finds that given the substantial reputation of the Complainant’s HOLSET mark and a lack of plausible explanation for the choice of incorporating the Complainant’s mark in the disputed domain name, the link by the Respondent of the disputed domain name to a website which sells turbochargers, the majority of which compete with the Complainant or its products and from which the Respondent likely obtains commercial gain is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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.
Susanna H.S. Leong
Sole Panelist
Date: October 15, 2014
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