The Complainant is Cummins Inc., United States of America (“United States”), represented by Mayer Brown LLP, Germany.
The Respondent is W, Malaysia / Seyed Mohamad Mirshafiei Langari, Cumminsbearing, Oman. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are 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 April 25, 2019. On April 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 29, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 3, 2019.
The Center verified that the Complaint, together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2019.
The Center appointed Ian Lowe as the sole panelist in this matter on June 11, 2019. 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.
The Respondent submitted a late informal reply on June 16, 2019. 4. Factual Background
The Complainant was founded in 1919 and has its headquarters in Columbus, Indiana, United States. It designs, manufactures, distributes, and services diesel and natural gas engines and related technologies, including fuel systems, air handling, and electrical power generation systems. The component parts of many of its products include bearings. The Complainant currently employs around 62,000 people worldwide and serves customers in about 190 countries and territories. In 2018, its total net income was about 2.14 billion United States dollars.
The Complainant is the proprietor of a substantial number of registered trademarks around the world in
respect of both the word mark CUMMINS and its device (“CUMMINS device”). These include United States trademarks number 4202572 CUMMINS and number 4202573 CUMMINS device both registered on September 4, 2012, and Islamic Republic of Iran trademarks number 20400 CUMMINS registered on May 5, 1960, and number 51359 CUMMINS device registered as of April 17, 1979.
The Domain Name was registered on December 26, 2010, and the Domain Name on July 22, 2012. Neither Domain Name currently resolves to an active website. In July 2018, the websites to which the Domain Names resolved both featured the CUMMINS device mark at the head of their home pages with the name “Cummins ballbearing Co.” and promoted a range of bearings, roller bearings, gear chains, and other component parts. Both websites gave a contact address of a shop in Tehran, Islamic Republic of Iran. An investigator instructed by the Complainant visited the shop in September 2018. The owner told the investigator that no genuine Cummins bearings were available in Islamic Republic of Iran because of economic sanctions but that he could obtain counterfeit Cummins bearings if a significant order were placed. The shop offered for sale bearings carrying the name and logo of SKF, a Swedish manufacturer of bearings. The Respondent did not respond to a cease and desist letter sent by the Complainant in November 2018. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its CUMMINS trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Center received an email from the Respondent on June 16, 2019, confirming the information discovered by the Complainant’s investigator. Namely, that the Respondent does not offer the Complainant’s products and uses the websites to “find some customers in Iran”, and that since these websites have been blocked, the Respondent is willing to sell them. 6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has uncontested rights in the CUMMINS trademark (the “Mark”), both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over very many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the Mark, together with the letters “co” and the Domain Name comprises the entirety of the Mark, together with the word “bearing”. In the view of the Panel, the addition of these terms does not detract from the confusing similarity of the Domain Names to the Mark. Accordingly, the Panel finds that the Domain Names are both confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Names. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for websites featuring the Cummins device under the name “Cummins ballbearing Co.” offering a range of products without the authority of the Complainant (the “Websites”). As the owner of the shop associated with the websites admitted, it was unable to sell genuine products of the Complainant because of economic sanctions, but offered to procure counterfeit products of the Complainant. The Respondent’s email communication of June 16, 2019, further reiterates that the Respondent did not sell the Complainant’s products, but was using the websites in order to attract customers, reinforcing the Panel’s view that the Respondent does not have rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
Since the Respondent has used the Domain Names for websites prominently featuring the Complainant’s CUMMINS device and has operated a shop under the Cummins name offering component parts similar or identical to those used by the Complainant, the Panel is in no doubt that the Respondent had the Complainant and its rights in the CUMMINS mark in mind when it registered the Domain Names. The Websites feature the Complainant’s CUMMINS device mark but offer a range of third party products for sale. The Panel accordingly considers that the Respondent has registered and used the Domain Names with a view to confusing Internet users into believing that the Websites were associated with or authorised by the Complainant.
In the Panel’s view, the use of domain names for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy.
Accordingly, the Panel finds that the Domain Names have been registered and are being used 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 Domain Names and be transferred to the Complainant.
Ian Lowe
Sole Panelist
Date: June 17, 2019
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