We hope you will enjoy this edition of the Digest (Vol. 3.27), as we review these noteworthy recent decisions, with commentary from our General Counsel, Zak Muscovitch. We invite guest commenters to contact us.
‣ A Simple Matter of Logic Saves Integrity (integrity .com*with commentary)
‣ Expired Domain Name Recovery ‘Made Easy’ (icemadeeasy .com*with commentary)
‣ Not The Panel’s Role to Search Online for Evidence Supporting Complaint (grantify .com)
‣ Complaint Dismissed But Case May Involve Wider Trademark Issues (blendsports .com)
‣ Cessation of Bad Faith Use Does Not Get Respondent Off the Hook (autocummins .com)
—
We wish our readers Happy 4th of July! May peace and blessings be with you on this occasion.
This Digest was Prepared Using UDRP.Tools and Gerald Levine’s Treatise, Domain Name Arbitration.
Have Something to Say? Share your feedback with us or contact us to write a Guest Comment!
A Simple Matter of Logic Saves Integrity
Integrity Marketing Group, LLC v. Sunil Bheda, NAF Claim Number: FA2305002044445
<integrity .com>
Panelists: Mr. Kendall C. Reed (Chair), Mr. Douglas M. Isenberg and Mr. Alan L. Limbury
Brief Facts: The Complainant’s business entails the development and distribution of life and health insurance products and wealth products with carrier partners. The Complainant operates nationwide in the United States, serving over 11 million clients, employing over 6,000 individuals, and helping insurance carriers place billions of dollars in new premiums. The Complainant owns USPTO registration for the mark INTEGRITY (issued on February 14, 2023) and additionally, claims common law rights in the INTEGRITY mark since 2016. The disputed Domain Name was created on August 16, 1996; however, a declaration provided by the Respondent herein suggests that the disputed Domain Name may have been transferred on September 8, 2020 (lacks clarity). The disputed Domain Name currently redirects to <Lrn .com>, whereby the Respondent offers to consult with respect to ethics and compliance programs.
The Complainant alleges that the Respondent uses the disputed Domain Name to direct Internet users interested in one of its competitor’s goods and services to its own website site, which is not a legitimate non-commercial or fair use of the disputed Domain Name. The Respondent contends that the Complainant’s assertion that its INTEGRITY trademark is famous and distinctive is not correct. There are some 44 US-registered trademarks for the word “INTEGRITY” and over 1,000 live U.S. trademark registrations that include the word “INTEGRITY.” The Respondent further contends that the disputed Domain Name was registered many years before the Complainant acquired either common law trademark rights or a trademark registration for the trademark INTEGRITY and that the Complainant attempted to purchase the disputed Domain Name from the Respondent, and failing in this, the Complainant initiated this UDRP action.
Held: The Complainant is the owner of a U.S. Trademark (issued on February 14, 2023), for the trademark INTEGRITY. This establishes the requisite rights. However, additionally, the Complainant asserts that it has extensive operations, a very extensive list of clients, and has assisted insurance companies in placing billions of dollars in new premiums, but no actual evidence is provided. A declaration from the Complainant’s general counsel again includes conclusory statements for which no factual support is provided. This is not the nature and extent of evidence that is required. Accordingly, the Complainant did not establish that it possessed common law trademark rights in INTEGRITY Trademark at any time.
The Respondent uses the disputed Domain Name to direct to its own website, which relates to consulting with respect to ethics and compliance programs, whereas the Complainant’s business is involved with the development and distribution of life and health insurance products and wealth products. It might be different if Complainant’s INTEGRITY Trademark were famous such that there was an almost unavoidable connection between the mark and the Complainant, in which event Respondent’s denial of the targeting would be difficult to accept, but this is not the case here. Additionally, the word “integrity” is a dictionary word. The Respondent’s intention is far more likely to be an effort to employ the generic and descriptive aspects of the word. The Policy cannot be used to capture the exclusive use of a generic and descriptive word with respect to domain names in all circumstances. The Respondent successfully establishes that it does have rights or legitimate interests with respect to the disputed Domain Name.
As a simple matter of logic, without prior knowledge of another’s nascent trademark rights, a domain name registrant cannot, at the time a domain name is registered, intend to cybersquat on a trademark before the trademark exists. In the present matter, the relevant Whois record shows that the disputed Domain Name was initially created in 1996. The U.S. trademark registration certificate for Complaint’s INTEGRITY trademark shows that the mark was registered on February 14, 2023. Even if one were to take September 8, 2020, as the date of creation of the disputed Domain Name, this would still pre-date the creation of the Complainant’s trademark rights by several years. As such, it would not have been possible for the Respondent to have had the requisite intention at the time the disputed Domain Name was created.
RDNH: In the present matter, the Complainant is not merely unsuccessful, but it clearly knew that the disputed Domain Name was registered long before the Complainant acquired trademark rights and as such could not establish bad faith conduct on the part of the Respondent. These facts were readily apparent from the Whois record and the date of the U.S. trademark registration of the Complainant’s INTEGRITY trademark. Accordingly, the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Complaint Denied (RDNH)
Complainants’ Counsel: Adam Solander of King & Spalding LLP, USA
Respondents’ Counsel: Jason Zedeck of Law Office of Jason Zedeck, USA
Case Comment by ICA General Counsel, Zak Muscovitch: This case is particularly instructive with regard to two fundamental issues under the UDRP.
The first is common law trademark rights. Here, the Panel consisting of Kendall Reed (Chair), Alan Limbury, and Douglas Isenberg, correctly took issue with the paucity of evidence supporting the Complainant’s allegation of common law trademark rights commencing in 2016. The Panel noted that the Complainant “asserted” that “it has extensive operations, a very extensive list of clients, and has assisted insurance companies in placing billions of dollars in new premiums, but no actual evidence is provided”. Even the Complainant’s submitted Declaration was inadequate since, as the Panel noted, it contained merely “conclusory statements for which no factual support is provided”. As noted in Digest Volume 3.9, where I referenced the Panel’s decision in Chandler Horsley v. Fundacion Private Whois, it is crucial that common law trademark rights not be accepted without adequate proof:
“Common law rights must be proven by strong and serious evidence of constant use and recognition from the objective customers of the goods or services…Awarding common law rights to any expression to ultimately granting the same status of either a trademark or service mark without proper evidence, would be improper behavior of this Panel and also very unjust…”
A second noteworthy issue arising from the present case, is the Panel’s clear reliance on “logic” when it comes to bad faith registration and use. Here, the Panel clearly stated the purpose of the Policy:
“The purpose the Policy is to address the problem of cybersquatting, which is, briefly stated, the intentional bad faith registration and use of a domain name that is the same or confusingly similar to another’s trademark, and a key aspect of cybersquatting is this intentionality.”
With that in mind, the Panel eloquently stated that it was a “simple matter of logic” that “without prior knowledge of another’s nascent trademark rights, a domain name registrant cannot, at the time a domain name is registered, intend to cybersquat on a trademark before the trademark exists.” [emphasis added]
This is of course correct, but I would take it one step further by applying logic not only to registration in bad faith, but also to whether or not the Respondent has a legitimate interest in a disputed Domain Name as was done in Riveron Consulting, L.P. v. Stanley Pace, NAF Claim No: FA1002001309793, where the Panel stated that without evidence of a complainant’s trademark rights at the time of a respondent’s registration, there is simply no foundation to conclude that a respondent has no rights in the domain name. Logically, a complainant cannot meet this initial threshold of showing that a respondent has no rights, if the Complainant itself had no demonstrable rights at the time of registration. As the Panel noted in Riveron:
“Complainant logically needs to show either that it had common law trademark rights in RIVERON at the time the disputed domain name was registered despite the first use date reflected on its USPTO registration, or show that Respondent’s rights and interests in <riveron .com>, although ripe at the time of registration, have since been vitiated. To prove the former Complainant must provide the Panel with competent evidence demonstrating common law trademark rights dating back to the time of the domain name’s registration. This it did not do. To prove the latter (that Respondent lost any rights it might have had), Complainant must at least suggest some circumstance which divested Respondent of its rights and interests in the domain name since such rights and interests are acquired at the time of registration, by the fact of registration, and are maintained by conduct consistent with the terms and conditions of the registration agreement. Without evidence of either Complainant’s trademark rights at the time of the at-issue domain name’s registration, or a showing that Respondent somehow lost any rights and interests in the domain name, there is no foundation from which to conclude that Respondent is, or was, legally bound to license the mark from the Respondent. If Respondent had no duty to license the domain name before registering it, then the fact that there was no license from Complainant and the fact that Respondent did not commonly go by the domain name, are each ultimately immaterial regarding paragraph 4(a)ii.”
Accordingly, in the same manner that bad faith registration requires a Complainant to have rights in a mark prior a disputed domain name registration, a Respondent must have had rights or a legitimate interest in a domain name that it registered prior to the Complainant’s trademark rights arising, and would continue to have those rights absent some event that resulted in their termination.
Expired Domain Name Recovery ‘Made Easy’
Mr. Mike Koenigstein (Roesch Inc.) v. DJA DANNER, CAC-UDRP-105419
<icemadeeasy .com>
Panelist: Ms. María Alejandra López García
Brief Facts: The US Complainant, founded in 1916, produces various goods including porcelain enamel, stainless steel, food service equipment, home appliances, HVAC equipment, and its own line of ice merchandisers and related products. The Complainant owns the US Trademarks for ICE MADE EASY (registered on June 13, 2017; first use in commerce of August 31, 2016), ICE MAID (registered on April 19, 1988; first use in commerce of February 1976), and a few other trademarks. The disputed Domain Name was initially registered by the Complainant on January 7, 2014; however, the Complainant inadvertently missed out on the disputed Domain Name’s renewal. As a result, the Respondent registered the disputed Domain Name on February 14, 2023, and currently resolves to an active website with ‘Ice Vending Business’ references, listing Complainant’s competitors and potentially malicious links.
The Complainant alleges that the Respondent had no rights to incorporate the trademark ICE MADE EASY in the disputed Domain Name or otherwise to render any services, in relation to Ice Merchandisers or Ice Bags or Ice Vending Machines; that the misleading webpage at the disputed Domain Name along with active MX records only reinforces the (false) association between the Complainant and the disputed Domain Name and leads to confusion and deception. The Complainant further alleges that it is inconceivable that the disputed Domain Name was registered without full knowledge of the existence of the Complainant and its trademark, given the present webpage and the initial parking page at the disputed Domain Name, which included reference to Ice Bags. The Respondent did not file a Response.
Held: The Respondent built a website that looks for revenues based on the Complainant’s original website, the Complainant’s ice merchandising line of business and its trademark rights owned at least since 2016. The aforesaid use of the disputed Domain Name is far from being a legitimate non-commercial or fair use of the domain name, or even less, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. It not only leads customers into a false association and confusion, which could be the “best-worst” scenario, but certainly the potential risks for customers’ data, and complex fraud online scenarios, where any Internet user can be involved. This Panel, considering the Complainant’s prior trademark rights existence (since 2016), consistent presence and relevance of its business (since 1916), the nature of the website content, its extensive commercial use, and the recognized quality of its products and services in the market. The use that it has been in fact, replicated by the Respondent and the absence of the Respondent’s Administrative or Formal Response, replying to the Complainant’s Contentions, concludes that the Respondent at the time of the registration/acquisition of the disputed Domain Name did it with the Complainant’s on mind.
This Panel also notes that on its registration the webpage at the disputed Domain Name hosted PPC links for the initial period that included reference to the ICE BAGS, and related products, linking to the Complainant’s competing sites. Later, the website’s content changed, offering products previously offered by the Complainant through the [older] disputed Domain Name’s website. To this Panel, it is evident that the Respondent not only has complete knowledge about the Complainant but understands its business and the value of a distinctive Trademark as ICE MADE EASY. Such use, misleads and generates confusion among the Complainant’s customers, which are not only from the US market, but the existence of the disputed Domain Name with active MX records, which enables the use of emails, in the wrong hands, in this case, has the potential not only to tarnish the Complainant’s Trademark efforts, goodwill, and prestige but to put on risk the data, including the financial one, of any Internet User. Hence, this Panel concludes that the disputed Domain Name is being used in faith.
Transfer
Complainants’ Counsel: Mr. A Raheja (UDRPKing.com)
Respondents’ Counsel: No Response
Case Comment by ICA General Counsel, Zak Muscovitch:
Congratulations to Complainant’s counsel, Ankur Raheja, who of course is our Editor-in-Chief! Given that the disputed Domain Name is a combination of common words, the domain registrant could have conceivably registered the Domain Name in good faith and put the Domain Name <icemadeeasy .com> to a legitimate or non-commercial use, or even put it up for sale. Based on the evidence however, that was not the case.
The domain registrant built a website featuring very specific content, namely the ice merchandising business, rather than the obvious descriptive choice which would have been simply ice making. The ice merchandising business featuring retail ice merchandising equipment is a business that the Complainant specifically dealt in with by the Complainant (see Complainant’s Catalog from 2018 here for ICE MADE EASY products). In particular, the disputed Domain Name’s sub-pages included information on inter alia, “Sites That Sell Ice Merchandisers”. Moreover, the homepage was presented as offering a “Free Ice Vending Business Start Up Guide”, and a user was asked to fill out a form, which was non-functional and the footer had filler text as well. This was obviously illegitimate use of the disputed Domain Name specifically targeting the Complainant and its relatively niche business and former use of the Domain Name.
Accordingly, the Panel determined that it was “convinced that the acquisition of the disputed domain name by the Respondent was not coincidental.” [emphasis added]. As in Victor Alvarado v. Michael F Mann, NAF Claim No 1772887 (lapsed Domain: <activerings.com>); “Use of a confusingly similar domain name to redirect Internet users to a respondent’s website may not be considered a bona fide offering of goods or services or legitimate non-commercial or fair use… a complainant may argue that it previously owned a domain name currently owned by a respondent to show bad faith on the part of the respondent.” The word “Bona fide” has been better explained in the UDRP decision of Medtronic, Inc. v. Aytekin Yilmaz of Medo Tekstil Elektronik, WIPO Case No D2021-1758 <medotronic .com>: “The words ‘bona fide’ must encompass the Respondent’s knowledge and motives in choosing the name in question – if done deliberately to trade off, or take advantage of the Complainant’s name or reputation, then the ’bona fide’ requirement is not met.” That was the case according to the Panel in the present case.
In the circumstances, the Respondent’s intentional and illegitimate aforesaid use specifically targeting the Complainant could not be interpreted to be generally descriptive either. Therefore, given the facts and circumstances of the case with the Respondent opting not to respond in the proceedings of the lapsed Domain Name, the Complainant was successful in proving the requirements of the Policy.
The domain registrant built a website featuring very specific content, namely the ice merchandising business, rather than the obvious descriptive choice which would have been simply ice making. The ice merchandising business featuring retail ice merchandising equipment is a business that the Complainant specifically dealt in with by the Complainant (see Complainant’s Catalog from 2018 Not The Panel’s Role to Search Online for Evidence Supporting Complaint
GRANTIFY LTD v. William Hood, WLH, LLC, WIPO Case No. D2023-1507
<grantify .app>, <grantify .com>, <grantify .net>, and <grantify .org>
Panelist: Mr. Assen Alexiev
Brief Facts: The Complainant, incorporated in October 2019, assists startup businesses to acquire government grant funding in the United Kingdom and more recently in the United States. The Complainant is the owner of the trademark registrations for the “GRANTIFY” in the UK, registered on June 25, 2021. The Complainant’s official website is located at the domain name <grantify .io>, registered on August 26, 2020. The disputed Domain Name <grantify .com> was acquired by the Respondent on April 26, 2021, and it resolves to an underdeveloped website for the Respondent’s product. The other disputed Domain Names were registered by the Respondent on March 30, 2021. The disputed Domain Names <grantify .org> and <grantify .net> resolve to parked webpages of the Registrar containing advertising links for grants and scholarships, and the disputed Domain Name <grantify .app> is inactive.
The Complainant alleges that the Respondent’s only interest in the disputed Domain Names is to divert online traffic away from the Complainant and to force the Complainant to purchase one or all of the disputed Domain Names at an inflated price. The Complainant adds that on December 8, 2020, it made an enquiry to purchase the disputed Domain Name <grantify .com> and received a response from a person named Carlos Paredes with an offer to sell this disputed Domain Name to the Complainant for the sum of USD $10,000. The Complainant further alleges that the Respondent is illegitimately using the website at the disputed Domain Name as a means to collect personal data. Some of the internal webpages featured on this website are incomplete and contain Latin holding text, while some of the links featured on it refer to an “Internal Server Error” or to articles that appear to bear no logical commercial relationship to the Respondent.
The Respondent contends that he is one of the partners in a venture contracted in 2019 to develop a software framework initially intended for the hotel/travel industry, the said venture was referred to as “Grantify” in January 2021 but has later changed its business plans. The Respondent confirms that he controls the disputed Domain Names with respect to content, that the website at the disputed Domain Name <grantify .com> was a demo website for his prior business model to highlight the “Grantify” function and software framework, and that any copyright violation was inadvertent and unintentional. The Respondent further contends that he has no relationship with Carlos Paredes and purchased the disputed Domain Name via the Registrar and its brokerage service in March of 2021 for USD $9,000 and is willing to sell the disputed Domain Name for a price of USD $15,000.
Held: The disputed Domain Name was acquired by the Respondent on April 26, 2021, and the other disputed Domain Names were registered by the Respondent on March 30, 2021, while the GRANTIFY trademark was registered later on June 25, 2021. The case file contains no evidence that supports a conclusion that the Respondent was somehow aware of the Complainant or of its yet unregistered GRANTIFY trademark at the time of acquisition and registration of the disputed Domain Names. The Complainant alleges that it has used the GRANTIFY trademark extensively in the United Kingdom, the European Union, and the United States since its incorporation in 2019, but does not submit any evidence about this. The Complainant further includes references to “published articles”, “testimonials”, etc., but there is no supporting evidence and it is not the Panel’s role to search online for the respective sources of information and to check the relevant publication dates in order to understand whether any of this information existed prior to the acquisition by the Respondent of the disputed Domain Names in the Spring of 2021.
The Panel does not find that the submitted evidence supports a finding that the Respondent would necessarily have been aware of the Complainant at the time of the acquisition of the disputed Domain Names. At the same time, the Respondent has submitted evidence that it had started to develop its own business under the brand Grantify at the beginning of 2021, and this business does not appear to have anything in common with the Complainant’s business. The explanation given by the Respondent of its choice of a name for its business also appears plausible, as well as the explanation of why its website has remained undeveloped. Accordingly, the Panel finds no basis to conclude that the Respondent knew of the Complainant when it acquired the disputed Domain Names and targeted it with its acquisition.
Complaint Denied
Complainants’ Counsel: Shakespeare Martineau LLP, United Kingdom
Respondents’ Counsel: Self-represented
Complaint Dismissed But Case May Involve Wider Trademark Issues
DK Company Vejle A/S v. Blend Sports Ltd., WIPO Case No. D2023-2100
<BlendSports .com>
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The Danish Complainant is one of the leading manufacturers of fashion within the European Union, and its products are present all over Europe, the US, Canada, Australia, Brazil, and the UAE. The Complainant’s official website is <blendcompany .com>. The Complainant is the owner of a range of registered trademarks for the figurative mark consisting of the small letter “b” in white against a black rhombus coupled with the word “BLEND” in capital letters. The earliest such mark was registered in the European Union on October 3, 2006. The disputed Domain Name was registered on June 21, 2016, and the associated website refers to a business named Blend Sports which appears to provide sportswear, gloves, and bags.
On February 15, 2023, the Complainant’s representatives wrote to the Respondent regarding the disputed Domain Name. The letter contained images said to be used by the Respondent on the website associated with the disputed Domain Name and its various social media pages. The letter sought an undertaking from the Respondent not to use “BLEND” or confusingly similar signs in relation to clothing in the various jurisdictions, to acknowledge the Complainant’s respective rights, to inform the Complainant of its sales from 2021-2023 and to pay a lump sum to the Complainant calculated on the basis of such sales, failing which the Complainant would proceed to litigation. On April 24, 2023, the Respondent emailed explaining that the Respondent was a legal entity established as a sports goods contract manufacturer in Sialkot, Pakistan, asserting that it used “Blend Sports” as a company identifier and did not use or put “Blend Sports” label on manufactured goods, denying trademark infringement, and asserting that it did not sell goods using “BLEND” anywhere in the world. The Respondent, therefore, rejected the Complainant’s claims.
The Complainant provides no timeline of its operations or evidence of its activities beyond a screenshot of its said official website. In addition, it produces three “Google” searches for the words “blend clothing” conducted by the virtual private network in the United States of America, the United Arab Emirates, and India, which each show the Complainant’s said website as the top result. The Respondent contends that while searches for “blend clothing” may disclose the Complainant’s interests, the Respondent operates in sports goods manufacturing, distinct from the Complainant’s focus on fashion and clothing. No confusion is caused. The Respondent further contends that the disputed Domain Name matches the Respondent’s corporate name and prior to receiving notice of this dispute, there is evidence of the Respondent’s use of the disputed Domain Name in connection with a bona fide offering of goods or services, namely sports goods manufacturing services.
Held: The disputed Domain Name was registered on June 21, 2016. The Complainant has not brought forth any direct evidence of the probable state of the Respondent’s knowledge as of that date. The Respondent unequivocally states that it did not have knowledge of the Complainant or its rights when it registered the disputed Domain Name. This is not entirely implausible given that the disputed Domain Name consists of two ordinary words in the English language. Nevertheless, the Panel is concerned by the Respondent’s apparent acceptance of the Complainant’s proposition that the font used for the wording on the gloves on the Respondent’s website appears identical to the font used in the Complainant’s mark. Further, the Respondent’s initial email reply to the Complainant’s cease and desist notice also raises concerns. In that email, the Respondent denied that it uses or puts a “Blend Sports” label on manufactured goods. The evidence plainly shows that the gloves on the Respondent’s website feature a “Blend Sports” label, and the Complainant picks up on this apparent discrepancy.
There are enough similarities in the Parties’ logos and concern regarding the ambiguity over the Respondent’s use of a “Blend Sports” label to have raised questions in the Panel’s mind, had there been a suitable quality of evidence suggesting that the notoriety of the Complainant would more probable than not have come to the Respondent’s attention when it registered the disputed Domain Name in 2016. However, there is no such evidence of any quality presented here, and it is the subject of mere assertion on the Complainant’s part. In the Panel’s view, the logo similarity issue and apparent ambiguity in the Respondent’s initial position, while somewhat concerning, are insufficiently conclusive and thus too marginal to be sufficient to impute the necessary historical knowledge of the Complainant and its rights to the Respondent. The Panel finds that the Complainant has failed to carry its burden regarding the registration of the disputed Domain Name in bad faith. This renders the question of use in bad faith moot, and the Complaint must fail.
It is clear that a wider trademark dispute between the Parties may remain that could be addressed in an alternative (court) forum. That is, however, a matter beyond the scope of this proceeding.
Complaint Denied
Complainants’ Counsel: Patrade A/S, Denmark
Respondents’ Counsel: Self-represented
Cessation of Bad Faith Use Does Not Get Respondent Off the Hook
Cummins Inc. v. 尹树潮 (Yin Shu Chao), WIPO Case No. D2023-1795
<autocummins .com>
Panelist: Mr. Matthew Kennedy
Brief Facts: The Complainant was founded in 1919 as Cummins Engine Company, Inc. and produces diesel and natural gas engines and related technologies. It serves customers throughout the world, including China. Specifically, it established an office in Beijing in 1979, formed its first Chinese joint venture in 1995, and now has 26 facilities, including 15 manufacturing sites, in China. The Complainant holds multiple trademark registrations in multiple jurisdictions including China, earliest registered on May 15, 1981. The disputed Domain Name was registered on March 9, 2020, and does not resolve to any active website. Previously it resolved to a website in English for “Pushi Diesel Parts” operated by Shiyan Pushi. The site offered for sale various brands of engines, pumps and spare parts for buses, trucks, construction machinery, generator sets, and marine vessels. The website prominently displayed three brands, one of which was Cummins, represented by the Cummins logo.
The Complainant alleges the website associated with the disputed domain name was clearly used with the intention to confuse users into believing that it is related to the Complainant, or is otherwise authorized by the Complainant to offer machinery and equipment, which overlaps with the Complainant’s core business, and may mislead Internet users into believing that it is endorsed by or affiliated with the Complainant. In an informal response, the Respondent submitted that he is a web developer and had registered Domain Name for Shiyan Pushi, which no longer uses it. Shiyan Pushi is a company founded in 1988 in Shiyan City, Hubei Province, China, holding a Chinese business license dated September 15, 2021, that indicates its activities include import/export and wholesale of auto parts.
Held: The disputed domain name, which wholly incorporates the CUMMINS trademark, was formerly used to resolve a website that prominently displayed the Complainant’s Cummins logo and offered for sale what were purported to be the Complainant’s products. The Complainant submits that it has not licensed, consented to, or otherwise authorized the Respondent to use any of the CUMMINS trademarks for the disputed domain name or for any reason whatsoever, nor is the Respondent an authorized representative or partner of the Complainant. The website not only offered the Complainant’s products but also products of other brands. These circumstances indicate that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and WIPO Overview 3.0, section 2.8.1. Further, as a commercial website, this is not a legitimate non-commercial or fair use of the disputed domain name.
As regards registration, the disputed domain name was registered in 2020, many years after the Complainant registered its CUMMINS mark and Cummins logo, including in China, where the Respondent is based. The disputed domain name wholly incorporates the CUMMINS mark, which it combines with the word “auto”, which indicates an awareness of the nature of the Complainant’s business. The associated website for Shiyan Pushi displayed the CUMMINS mark and the Cummins logo and offered for sale what were purported to be the Complainant’s products. The Panel finds that the Respondent had the Complainant and its CUMMINS mark in mind when he registered the disputed domain name. As regards use, given these circumstances and the findings above, the Panel finds that this use of the disputed domain names intentionally attempts to attract, for commercial gain, Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that website and of the products on it as set out in paragraph 4(b)(iv) of the Policy.
The Respondent submits that Shiyan Pushi no longer uses the disputed domain name. Indeed, the disputed domain name has ceased to resolve to an active website since the Respondent received notice of this dispute. However, this change in use does not alter the Panel’s conclusion; if anything, it may be further evidence of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
Transfer
Complainants’ Counsel: Mayer Brown LLP, Hong Kong, China
Respondents’ Counsel: Self-represented