WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
FIT Bearings v. zhangtuo
Case No. D2007-1488
1. The Parties
Complainant is FIT Bearings, Fermont, California, United States of America, represented by Garvey, Schubert & Barer, United States of America.
Respondent is zhangtuo, Ningbo, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <fitbearing.com> is registered with Xin Net Technology Corporation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2007. On October 10, 2007, the Center transmitted by email to Xin Net Technology Corporation a request for registrar verification in connection with the domain name at issue. On October 15, 2007, Xin Net Technology Corporation transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 18, 2007. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on October 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2007. The Response was filed with the Center on November 5, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 16, 2007. 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.
On December 4, 2007, the Panel issued a Panel Order requesting the parties to provide further submissions. Such submissions are discussed further below under “Discussion and Findings”.
4. Factual Background
Complainant is Fremont International Trading, Inc. dba FIT Bearings, a California corporation of United States of America that imports and sells ball rings and ball bearings. Complainant has been in this business since 1988, and has used the FIT BEARINGS mark the entire time it has been in business. Complainant is the registered trade mark owner in the United States of America of the word marks FIT; FIT BEARINGS and a composite mark made up of the words FIT BEARINGS and a device of the letters FIT inside a circle in respect of ball rings; ball bearings, as parts of machines and the registration numbers are respectively – Reg. No. 2, 604, 543, registered August 6, 2002; Reg. No. 1, 863, 488, registered November 22, 1994; Reg. No. 2, 871, 198, registered August 10, 2004. Complainant has also filed a trade mark registration for FIT BEARINGS in China on February 27, 2007.
Complainant is also the registered owner of the domain name <fitbearings.com>.
Respondent registered the disputed domain name on May 23, 2005. According to the WhoIs information and the Registrar's verification response of October 15, 2007 to the Center, Respondent is “zhangtuo”. The Response identifies “zhangtuo” as the contact person of Flight International Industrial Co. Ltd. (with a Mr. Liu as representative) which manufactures and sells products such as ball bearing, automobile and motorcycle parts, nuts, bolts, screws and hardware. Respondent's website is used to market and sell its products.
On December 18, 2006, Complainant wrote to Respondent informing Respondent of Complainant's trade mark rights and demanded a cease and desists in Respondent's use of the disputed domain name. Respondent has refused Complainant's request.
5. Parties' Contentions
Identical or Confusingly Similar
Complainant asserts that the mark FIT BEARINGS has become a distinctive identifier of Complainant's products. Complainant has used the FIT BEARINGS mark continuously in commerce for over 19 years to identify its products and has invested significant resources in building up recognition and goodwill for its mark through extensive marketing and advertising. Complainant asserts that its long term presence in the industry and extensive publicity and marketing has established its common law trade mark rights well before the disputed domain name was registered.
Complainant contends that the disputed domain name is very similar to Complainant's FIT BEARINGS mark as there is only a difference of one letter “s” between Respondent's disputed domain name and Complainant's trade mark. Thus, Complainant argues that consumers are likely to mistakenly type “www.fitbearing.com” when searching for “www.fitbearings.com” or to be provided with the incorrect domain name as the result of a search for Complainant's FIT BEARINGS.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name for following reasons:
– Complainant has never authorized Respondent to use the FIT BEARINGS mark for a domain name or any other purpose.
– There is no indication that Respondent is known under the disputed domain name and “fit” is not any acronym of Flight International Industrial Co. Ltd., the name by which the company is known.
– Respondent is not using the disputed domain name for any non-commercial or fair use. Instead, Respondent is in the same business as Complainant. Consequently, Complainant asserts that Respondent has registered the disputed domain name solely to cause confusion for consumers by luring them to a similar website and then offering to sell them competing products.
Complainant asserts that its burden of proof on this element is light and once Complainant makes a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain, the burden shifts to Respondent and Complainant contends that Respondent is not able to meet its burden of showing a right or legitimate interest in the disputed domain name.
Registered and Used in Bad Faith
Complainant asserts that Respondent has registered and used the disputed domain name in bad faith for the following reasons:
– That there is no indication that Respondent has been known by the disputed domain name or that it has made any legitimate non-commercial or fair use of the disputed domain name.
– Although Respondent has no association with the mark FIT BEARINGS, Respondent has registered a domain name which is confusingly similar to Complainant's mark and is attempting to sell competing products through the domain name. Complainant asserts that the fact that Respondent incorporated Complainant's mark in the disputed domain name is evidence of bad faith by Respondent.
– Respondent has registered a domain name that was only different from Complainant's trade mark by the omission of the letter “s” and this amounted to bad faith registration as Respondent has intentionally attempted to attract, for commercial gain, Internet users to the their website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website location. Complainant's asserts that this argument is supported by previous UDRP decisions.
Identical or Confusingly Similar
Respondent contends that the disputed domain name was registered with Xin Net Technology Corporation in accordance with ICANN regulations and the regulations governing Chinese top-level domains in China. The fact that Respondent has successfully registered the disputed domain name shows that Respondent did not infringe any one's rights otherwise the registration will not be allowed.
Respondent contends that there are many registered domain names that are similar and may differ only in very small ways. Respondent cited the example of <romon.com> and <baromon.com>. The former belongs to a company in Ningbo and the latter belongs to a company in Shanghai. Both companies are in the business of manufacturing and retailing men's business suits. Such registrations exist and are allowed in China.
Respondent refutes Complainant's contention that the disputed domain name <fitbearing.com> is confusingly similar to Complainant's registered trade mark and domain name <fitbearings.com>. This is because Complainant and Respondent are both in a specialized industry and their target customers are all equipped with extensive professional knowledge of the products in question. Respondent contends that it has sufficient grounds to believe that the customers will not be confused because the contents, look and feel of Respondent's website is very different compared to that of Complainant's. Although Respondent is also in the business of selling ball rings and ball bearings, the products sold on Respondent's website are not identical to Complainant's products and they do not bear Complainant's trade marks. Instead, Respondent is selling its own ball rings and ball bearings.
Rights or Legitimate Interests
Respondent contends that the disputed domain name was registered legally and it is being used by Respondent in a reasonable and legal manner. Respondent contends that it has every right to use the disputed domain name that has been legally registered and no license is required from Complainant to do so. Consequently, Respondent contends that it has rights or legitimate interests in respect of the domain name.
Registered and Used in Bad Faith
Respondent contends that the disputed domain name was not registered and used in bad faith as it was not registered for the purposes of resale, rental or transfer to another with a view of obtaining a commercial gain for itself. Further, Respondent asserts that the disputed domain name was registered to be used in a legal manner. It was not registered for the purposes of obtaining a commercial gain by transferring it to a Complainant's rival or competitor or primarily to disrupt the business of a competitor, i.e., Complainant or to intentionally attempt to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation with Complainant.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Complainant confirms that there is no agreement between Complainant and Respondent to the effect that the proceedings should be in English. However, Complainant contends that the administrative proceedings should continue to be conducted in English for the following reasons:
– Respondent has demonstrated proficiency in English, particularly in connection with the disputed domain name.
– The correspondence between the parties prior to the commencement of this administrative proceeding regarding the disputed domain name has been in English. At no time, did the representative of Respondent Mr. Liu indicate that he did not understand English or that he was unable to proceed in English.
– The disputed domain name uses English letters and the website represented by the disputed domain name is in English, with Chinese only offered as an alternative language.
– To force Complainant to proceed in English would be inequitable given the fact that Respondent is demonstrably capable of conducting business in English and is doing so using the disputed domain name.
Respondent has via email to the Center argued that the proceeding should be conducted in Chinese as Respondent's command of the English language is weak and may not fully understand the entire proceeding. Respondent asserts that the disadvantage in its lack of proficiency in English puts Respondent in a passive position and is unfair. However, Respondent is prepared to proceed in English if documents are available in Chinese and English so that any disadvantage on the part of Respondent in a lack of language proficiency in English is removed.
(i) The Panel's discretion under the Policy
Paragraph 11 of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name, the contents of Respondent's website and the language of Respondent's email correspondence with Complainant. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, Respondent was able to respond to Complainant's Complaint which was submitted in English without any difficulty and within the given time frame. Further, Respondent was able to respond to a Supplemental Filing by Complainant also submitted in English with no difficulty even though Respondent is not obliged to do so. Respondent has also been notified of the administrative proceeding in both English and Chinese. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the language of the proceeding should be English and the decision of the Administrative Panel will be rendered in English.
6.3 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences there from, as it deems appropriate.
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:
(i) Identical or Confusingly Similar
Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the FIT BEARINGS mark in the United States of America and that it has acquired common law rights through long and extensive use of the mark.
The disputed domain name consists of Complainant's mark FIT BEARINGS in its entirety without the letter “s”and the suffix “.com”. The Panel finds that the omission of the letter “s” in the disputed domain name is a small variation which is not sufficient to distinguish the disputed domain name from Complainant's FIT BEARING mark. It is also an accepted principle that the addition of suffixes such as “.com” being the generic top-level domain is not a distinguishing factor. Consequently, the Panel finds that the disputed domain name is confusingly similar to Complainant's trade mark.
The Panel finds for Complainant on the first part of the test.
(ii) Rights or Legitimate Interests
Based on the following reasons the Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “fitbearing” in its business operations prior to notification of the present proceeding.
2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark.
3. There is no indication on the record that Respondent is commonly known by the disputed domain name. In fact, Respondent's company name is Flight International Industrial Co. Ltd. and is so known.
4. There is no indication that Respondent is using the domain name for any non-commercial or fair use.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
Respondent has argued that the disputed domain name was registered in accordance with ICANN regulations and the regulations governing top-level domain names in China. Consequently, Respondent has rights or legitimate interests in the domain name. It is important to note that under the ICANN regulations, a domain name registrant undertakes not to register a domain name which infringes the rights of legitimate trade mark owners and in this regard, registration of the disputed domain name by Respondent is subject to the legitimate rights of third party trade mark owners. Respondent has not adduced evidence to show that it owns any registered trade mark rights in the name “fitbearing” and that it has been using this term in association with its business prior to registration.
Although Respondent has used the disputed domain name to offer goods and services on the Internet, it is important to note that this does not automatically mean Respondent has acquired rights or legitimate interests in the disputed domain name with this use. This is especially the case if the use by Respondent potentially infringes the trade mark rights of another.
To further assist the Panel in deciding whether Respondent has rights or legitimate interests in the disputed domain name, the Panel has issued a Panel Order on December 4, 2007, requesting Respondent to submit further evidence to show (a) date and proof of incorporation of Flight International Industrial Co. Ltd.; (b) nature of its business; (c) length of prior use of the term “fitbearing” on goods and services; and (d) explanation of why <fitbearing.com> was chosen as the domain name when Respondent's logo is “flit”. Respondent did not respond within the deadline stipulated in the Panel Order and has submitted a response only on December 14, 2007. In this late submission, Respondent explained that its company Flight International Industrial Co. Ltd. has applied for registration in 2006 but was unable to produce evidence of incorporation because of inefficiencies of the Chinese government. Therefore, Respondent is unable to provide evidence of its company's incorporation, the nature of its business and the length of prior use of the term “fitbearing” on goods and services. Secondly, Respondent explained that it has originally intended to register “fit” as its logo but has been advised by the relevant government authorities that as “fit” is the name of one of Guangzhou Honda Co. Ltd.'s automobile model – “fit”, Respondent's application may not succeed. Consequently, Respondent decided to register “flit” (the acronym of its company name) as its logo. Respondent explained that as Guangzhou Honda Co. Ltd. did not own a domain name with “fit” in it, Respondent was able to successfully register <fitbearing.com>.
The Panel is not persuaded by Respondent's explanation that it was not able to produce evidence of its company's incorporation because of the inefficiencies of the Chinese government authorities. Even if Respondent's application for registration may still be pending with the Chinese authorities, it is open for Respondent to submit for the Panel's perusal documents of incorporation such as the Memorandum and Articles of Association and other relevant promotional materials in relation to its company and business undertakings. The failure of Respondent in producing such documentary proof is in the opinion of the Panel strong indication that Respondent does not have rights or legitimate interests in the disputed domain name.
Similarly, the Panel is not persuaded by Respondent's explanation of its choice of the term “fitbearing' in its domain name. Respondent has explained why it has registered “flit” as its logo instead of “fit”. If Respondent's argument is true, then the logical and rational course of action for Respondent is to register <flitbearing.com> instead of the disputed domain name <fitbearing.com> since there was an initial concern that the use of the term “fit” would infringe the rights of Guangzhou Honda Co. Ltd. in its name “fit” for a model of automobile. It is therefore peculiar that Respondent has chosen to register <fitbearing.com> instead and Respondent has not provided a satisfactory explanation for its choice of the disputed domain name. The Panel finds that Respondent has not been consistent in its explanations and rejects Respondent's contentions.
In conclusion, the Panel finds that Respondent has not successfully discharged his burden of proving that he has rights or legitimate interests in the disputed domain name <fitbearing.com>.
The Panel finds for Complainant on the second part of the test.
(iii) 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 domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark 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 domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark 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 domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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.
To find bad faith on the part of Respondent and to order a transfer of the disputed domain name to Complainant under the present proceeding, Complainant must discharge its burden of proof under the Policy that Respondent registered and used the domain name in bad faith. This commonly includes among other things showing that a respondent had knowledge of a complainant and its trade mark rights prior to or at the time of registration/acquisition of the disputed domain name. Previous panels have recognized that in the absence of clear evidence that a respondent had actual knowledge of a mark, certain inferences may be drawn in terms of likely knowledge from inter alia the fame of a complainant's mark. Respondent has argued that Complainant does not have trade mark rights in China and its trade mark FIT BEARINGS is not well known in China. Respondent has also emphasized that it did not know of the existence of Complainant and its trade mark when it registered the disputed domain name <fitbearing.com>.
In accordance with a Panel Order requesting Complainant to submit further evidence to prove (a) date of entry into the Chinese market and length of business presence in China; (b) fame and notoriety of the FIT BEARINGS trade mark in China in general or particularly in the ball rings and ball bearings trade, Complainant has adduced evidence to show that it has substantial business ties with China and that within the ball bearings and ball rings industry, Complainant and its trade mark do command a substantial reputation and goodwill within the Chinese market. It is important to note that according to accepted international standards, the fame or notoriety of a trade mark is often determined by the relevant section of the public for instance within a particular trade or industry. In the present case, the Panel is satisfied that Complainant has adduced sufficient evidence to show that it has acquired considerable reputation and goodwill within the ball bearings and ball rings industry in the United States of America and in the relevant Chinese market. Furthermore, in this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. More particularly, Respondent appears to be in the same trade and industry as Complainant and on the strength of Complainant's reputation in its trade mark FIT BEARINGS within the ball bearings and ball rings industry, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant's trade mark rights at the time of the registration of the domain name.
The Panel also notes that although Complainant does not have registered trade mark rights in China, this does not necessarily mean that Complainant does not satisfy the requirements of paragraph 4(a)(i) of the Policy discussed above. The consensus view of panelists as stated in the WIPO Overview of WIPO Panel Views on selected UDRP Questions concludes that “if the complainant owns a registered trade mark then it satisfies the threshold requirement of having trade mark rights. The location of the registered trademark and the goods and/or services it is registered for are irrelevant when finding rights in a mark.” See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661. The Panel also notes that such unregistered marks are also protected under unfair competition laws in China. Several panels under the Policy have decided that the Policy affords protection not only to those having rights in registered trade marks but also to those having common law rights in their trade or service marks. See Bennett Coleman & Co Ltd v. Steven S Lalwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Signs, WIPO Case No. D2000-0131; Cedar Trade Associates, Inc. dba BuyPC.com v. Gregg Ricks, NAF Case No. FA93633; and Passion Group Inc. v. Usearch, Inc., Case AF0250. Therefore, Respondent must not register a domain name which will infringe Complainant's trade mark rights and it is Respondent's duty to ensure that the domain name it registers does not infringe third parties' rights, failing which third parties shall have the right to challenge Respondent's domain name registration. Registration of a domain name by Respondent which infringes another's trade mark rights without legitimate reason is therefore indicative of bad faith registration.
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 which offers similar goods, ball bearings and ball rings. Given the reputation of Complainant's FIT BEARINGS trade mark within the ball bearings and ball rings industry in the United States of America and beyond, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant's widely known and distinctive trade mark, intended to ride on the goodwill of Complainant's trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential targeted partners and end users, who are most likely to be familiar with traders in the ball bearings and ball rings industry, are led to believe that the website “www.fitbearing.com” is either Complainant's website or is a website associated with or endorsed by Complainant or that Respondent is the authorized partner of Complainant, while in fact it is neither of these. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant's FIT BEARINGS trade mark and this constitutes a misrepresentation to the public that Respondent's website is in one way or the other associated or connected with Complainant's. In the absence of evidence to the contrary and convincing rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <fitbearing.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: December 17, 2007