The Complainant is Cummins Inc., United States of America (“United States”), represented by Mayer Brown LLP, Hong Kong, China.
The Respondent is Jasper Lee, EMAC International Trading Co., Ltd, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2020. The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 30, 2020. 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 A. Complainant The Complainant is a Fortune 500 company incorporated in the State of Indiana in the United States, founded in 1919, and listed on the New York Stock Exchange. The Complainant designs, manufactures, distributes and sells diesel and natural gas engines and related products, in jurisdictions worldwide under the trade mark CUMMINS (the “Trade Mark”). The Complainant has, since 1995, formed several joint ventures with companies in China, and is one of the largest foreign investors in China’s diesel engine industry. The Complainant is the owner of registrations in jurisdictions worldwide for the Trade Mark, including United States registration No. 0579346, with a registration date of September 1, 1953; and Chinese registration No. 146672, with a registration date of May 15, 1981. The Complainant is also the owner of domain names comprising the Trade Mark, including The Respondent is apparently a company incorporated in China. C. The Disputed Domain Name The disputed domain name was registered on November 11, 2011. D. The Website at the Disputed Domain Name The disputed domain name has been used by the Respondent in respect of an English and Chinese language website which promotes and offers for sale a wide range of engine products and parts apparently manufactured by the Respondent and its group of companies in Shenzhen, China (the ”Website”). 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration. The disputed domain name incorporates the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the word “engine”, a word which is descriptive of the Complainant’s products marketed and sold under the Trade Mark. Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or (iii) the respondent is 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 trade mark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption. The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain name in connection with the Website, in order to promote and offer for sale engines, engine parts and related products, in direct competition with those manufactured and sold worldwide (including in China) by the Complainant under the Trade Mark for many decades. It is also expressly stated on the Website, contrary to the fact, that the Respondent is an authorised dealer and partner of the Complainant and its joint venture partners in China. There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In light of the evidence of the Respondent’s use of the Website in the manner described above, the Panel finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy. The uncontested evidence demonstrates that the Respondent has registered and used the disputed domain name in order to target the Complainant’s Trade Mark and in order to obtain commercial advantage by attracting Internet users to its Website, in order to market and sell its competing engine products and engine parts, in direct competition with those marketed and sold by the Complainant for many years under the Trade Mark. For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is 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 disputed domain name Sebastian M.W. Hughes
Sole Panelist
Dated: January 13, 2021
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