The Complainant is Cummins Inc., United States of America (“United States”), represented by Mayer Brown LLP, Hong Kong, China.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Hua Shen, Gogobar, Philippines. 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 October 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2020, 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 amended Complaint on November 6, 2020. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on December 16, 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 The Complainant is a designer, manufacturer and distributer of diesel and natural gas engines and related technologies under the trade mark CUMMINS (the “Mark”). The Complainant is based in Columbus, Indiana, United States. The Complainant is the owner of a large number of trade mark registrations for CUMMINS around the world, including: - United States trade mark registration number 0579346, registered on September 1, 1953; The disputed domain name was registered on November 15, 2019. It does not currently point to any active website, although the Complainant has provided evidence showing that it has been used to direct Internet users to a Chinese lottery website. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world and its common law rights, which arose as a result of the extensive use of the Mark over a long period of time. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) with the addition of the descriptive words “spare” and “parts”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to direct Internet users to a Chinese lottery website under the name Phoenix Lottery. Roughly half of the Respondent’s website contains a “fashion” section. On clicking on any part of the main pages of the Respondent’s website, Internet users are redirected to “www.fhccc42.com/?channell=10001”, another online gambling website. As such, the Complainant argues that the Respondent is clearly using the disputed domain name for the purpose of enticing Internet users to online gambling websites, none of which is for the benefit of, or has the approval of, the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of the disputed domain name; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and of the Mark when it registered the disputed domain name. All the available evidence points to the Mark being a badge of origin for the goods and services provided by the Complainant, on account of its long standing and intensive use of the Mark and its multiple trade mark registrations around the world for it. The Respondent’s own use of the disputed domain name to direct Internet users to an online gambling websites (which have nothing to do with “spare parts”) further confirms that the Respondent has no legitimate interests in respect of the disputed domain name and registered it in bad faith. Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the Mark is recognisable within the disputed domain name. The addition of “-spare-parts” and the gTLD “.com” in the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to entice Internet users to online gambling websites does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. The Panel therefore considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name, and the nature of the disputed domain name, being a reference to the availability of “spare parts” in association with the owner and licensor of the Mark, carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1). By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered and first used by the Complainant and accepts that the disputed domain name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. In particular, the Panel accepts the Complainant’s arguments that the addition of the words “spare” and “parts” may be seen as referring to engine spare parts, which fall directly within the core business of the Complainant. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. It is being used for a commercial purpose that involves enticing Internet users (in particular those seeking the Complainant) to online gambling websites. Previous UDRP panels have established that such use is evidence of bad faith under paragraph 4(b)(iv) of the UDRP. The Respondent has not sought to explain its registration and use of the disputed domain name, has attempted to conceal its identity, and has not participated in these proceedings. There therefore is no basis for the Panel to conclude that the Respondent’s use of the disputed domain name is justified. In addition, whilst the existence another UDRP proceeding having been won against the Respondent (Credit Karma, Inc. v. Domain Administrator, See PrivacyGuardian.org / gogobar, hua shen and zhangcunshuo, Zhang Cun Shuo,WIPO Case No. D2019-2415) does not create a presumption of bad faith per se, it does tend to support such a finding of bad faith where the Respondent has not taken any steps to rebut it. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to entice Internet users to online gambling websites is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name 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 Gareth Dickson
- United States trade mark registration number 4202572, registered on September 4, 2012;
- European Union Trade Mark Registration number 001373513, registered on January 12, 2001;
- Chinese trade mark registration number 275567, registered on January 20, 1987;
- Chinese trade mark registration number 266275, registered on October 20, 1986;
- Philippines trade mark registration number 2600, registered on October 6, 1960; and
- Philippines trade mark registration number 501675, registered on December 20, 2012.
Sole Panelist
Date: January 4, 2021
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