Complainant is Weld Mold Company of Brighton, Michigan, United States of America, represented by Bodman PLC, United States of America.
Respondent is Jinan Hipoint Co., Ltd of Jinan, Shandong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2015. On May 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on June 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 6, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 7, 2015.
The Center appointed Yijun Tian as the sole panelist in this matter on July 15, 2015. 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
Complainant, Weld Mold Company (hereinafter referred to as "WM" and/or "Complainant"), is a company incorporated in Brighton, Michigan, United States. Complainant was found in 1945, and it is a leading international organization that specializes in manufacturing high-alloy welding electrodes, cored wire, and solid wire applications ranging from Ni-Cr-Mo alloys to high-nickel and cobalt alloys to chrome carbide and chrome manganese alloys.
It has exclusive rights in several registered Weld Mold CompanY trademarks and/or the trademarks that contain "weld mold company" (hereafter "Weld Mold Company Marks") in different countries, including the United States (e.g., WELD MOLD COMPANY, United States Registration No. 1,533,914, registered in 1989), and China (e.g., WM WELD MOLD COMPANY, Chinese Registration No. 9997963, registered in 2012).
Respondent is Jinan Hipoint Co., Ltd of Jinan, Shandong, China. The disputed domain name was registered on November 4, 2003, long after the Weld Mold Company Marks became internationally known. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
The disputed domain name is identical or confusingly similar to the Weld Mold Company Marks because the disputed domain name incorporates the first two words of the Weld Mold Company Marks in their entirety in association with a hyphen and the English word "China." The addition of the hyphenated suffix of "China" within the disputed domain name enhances the level of confusion of Internet users.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by 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 Panel finds that Complainant has rights in the Weld Mold Company Marks acquired through registration. The Weld Mold Company Marks have been registered in various countries, and Complainant has a widespread reputation as a global provider of many Welding goods offered under the Weld Mold Company Marks worldwide.
The disputed domain name comprises the first two words of the Weld Mold Company Marks (which are the most distinctive parts of Weld Mold Company Marks) in their entirety. The disputed domain name only differs from Complainant's trademark by the omission of "company" and additions of a hyphen "-"and the term "china" to the Weld Mold Company Marks. This does not eliminate the confusing similarity between Complainant's registered trademarks and the disputed domain name.
Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it". (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610 citing General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087).
Mere omission of "company" and additions of "-" and the descriptive term "china" as suffixes to Complainant's marks fails to distinguish. By contrast, it may increase the likelihood of confusion. Internet users are likely to be confused and may falsely believe that is operated by Complainant for providing products and services in China.
Thus, the Panel finds that the differences are not sufficient to negate the confusing similarity between the disputed domain name and the Weld Mold Company Marks.
The Panel therefore holds that the Complainant fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances if proven demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with 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 in a domain name, the burden of production shifts to respondent to rebut complainant's contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 and cases cited therein).
Complainant has rights in the Weld Mold Company Marks in different countries including in the United States (since 1989) and China (since 2012).
Respondent is not an authorized dealer of Weld Mold Company-branded products and services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to Respondent to produce evidence to rebut this case (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word "weld mold" in its business operation. There has been no evidence to show that Complainant has permitted Respondent to apply for or use any domain name incorporating the Weld Mold Company Marks or the dominant part of WELD Mold Company Marks.
By contrast, at the bottom of the webpage, it stated "copright © www.WeldM All rights reseved". Moreover, in the decision made by the Shandong Supreme Court of China in 2014 (see Annex 5 to the Complaint), the court held that "Weld Mold Company" is also referred as to "美国汉默公司"(United States Hammock Company) because its founder's family name is "Hammock" (汉默). And the contents of the website at the disputed domain name frequently indicate that Respondent is "汉默公司" (Hammock Ltd.). As such, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the Weld Mold Company Marks.
Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the website, potential partners and end users are led to believe that the website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not.
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name on November 4, 2003. The disputed domain name is confusingly similar to Complainant's Weld Mold Company Marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was actually advertising, offering and selling purported Weld Mold Company products and services at the website "www.".
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complainant fulfils the second condition of paragraph 4(a) of the Policy. 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 the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) 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 domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.
The Panel finds that Complainant has a widespread reputation in the Weld Mold Company Marks with regard to its products. Complainant has registered its Weld Mold Company Marks in different countries, including registrations in the United States (since 1989) and China (since 2012).
Moreover, according to the information provided by Complainant, Respondent directly copies the dominant part of the registered Weld Mold Company Marks and claims it is "汉默公司" (Hammock Ltd.) (as discussed above in 6.B.) on the website resolved by the disputed domain name, and contains an English copyright statement ("copright © www.WeldM All rights reseved.") at the bottom session of the disputed website.
Respondent would not have advertised products purporting to be Weld Mold Company products and services on the website if it was unaware of Complainant's reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name. The Panel therefore finds that the Weld Mold Company Marks are not ones those traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Moreover, Respondent has chosen not to respond to Complainant's allegations. According to the UDRP panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith". (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's Weld Mold Company branded products and services.
Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's website" offering Complainant's Weld Mold Company branded products and services without authorization.
Complainant claimed that Respondent is using the disputed domain name with intent for "commercial gain" misleadingly to divert consumers or to tarnish the Weld Mold Company Marks.
To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the Weld Mold Company Marks (as well as the affiliation statement on the website - mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website by Complainant. In other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the Weld Mold Company Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the website, potential partners and end users are led to believe that the website "www." is either Complainant's site or a site of an official authorized partner of Complainant, which it is not. Moreover, Respondent has not responded to the Complaint. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's trademarks, intended to free ride on the goodwill of Complainant's trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complainant fulfils the third condition of paragraph 4(a) of the Policy. 7. Decision
For all 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 Complainant.
Yijun Tian
Sole Panelist
Dated: July 30, 2015
Full & Egal Universal Law Academy