Complainant is Moen Incorporated of North Olmsted, Ohio, United States of America, represented by Calfee, Halter & Griswold of United States of America.
Respondent is Hu Xian Wang of Zhejiang, People's Republic of China.
The disputed domain name <xmoen.com> is registered with OnlineNic, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2008. On November 25, 2008, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the disputed domain name. On November 26, 2008, OnlineNic, Inc. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. Respondent did not respond to the Complaint and the Notification of Respondent Default was sent on January 6, 2009.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January 22, 2009. 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.
Complainant, Moen Incorporated, is a company incorporated under the laws of the United States of America and is in the business of providing innovative plumbing products for the kitchen and bath. Complainant has been using MOEN as a trade name and trademark for over sixty years and has common law trade name and trademark rights in MOEN. Complainant owns approximately one hundred forty (140) trademark registrations in sixty seven (67) countries throughout the world for MOEN or incorporating the term moen, including registrations in the United States of America and China. Based on a review of USPTO records, there are no U.S. trademark registrations or applications made up of, or incorporating, the term moen other than those owned by Complainant.
The <xmoen.com> domain was first created on April 20, 2006 and last updated on April 20, 2008, according to the OnlineNIC.com WhoIs database.
Complainant contends that the disputed domain name is identical or confusingly similar to the marks for which Complainant owns a multitude of trademark registrations in the United States, China and in a number of other countries. Complainant further contends that Respondent's simple inclusion of the letter “x” in the disputed domain name prior to the Complainant's MOEN mark does not diminish the confusing similarity between the disputed domain name and Complainant's MOEN mark. The incorporation of a complainant's well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the complainant's trademark. Complainant cites Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138 (April 19, 2000); Hewlett-Packard Company v. Posch Software, Case No. FA95322 (Nat. Arb. Forum, September 12, 2000).
Complainant contends that Respondent has no authority, whether actual or apparent, has no consent, has no license, and has no authorization to use the MOEN trademark or trade name or to register any domain name identical or confusingly similar to the MOEN mark or trade name.
Under the Policy and the Rules, Respondent may demonstrate a right or legitimate interest in the disputed domain name by proving to the Panel one of three sets of circumstances set forth in the Policy at paragraph 4(c). However, Complainant contends that Respondent cannot establish any of the three sets of circumstances that would demonstrate that it has any right or legitimate interest in the disputed domain name for the following reasons:
1. There is no evidence of Respondent's use of, nor demonstrable preparations to use, the dispute domain name or any corresponding name in connection with a bona fide offering of goods or services.
2. There is no evidence that Respondent has been commonly known by the disputed domain name or any variation of the word moen apart from Respondent's unauthorized use of Complainant's MOEN trademark. Respondent is infringing Complainant's trademark rights in the MOEN trademark by including the term moen in the name of its business, Xiandai Moen, which sells plumbing fixtures and other goods that are similar to those sold by Complainant in direct competition with Complainant. On November 20, 2007, Complainant filed a trademark opposition in China against Respondent's Chinese Trademark Application No. 4512032 for the mark XIANDAIMOEN. The opposition is currently pending with the Chinese Intellectual Property Office.
3. Respondent cannot argue that it is making “a legitimate noncommercial or fair use of either of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.” Respondent is attempting to attract Internet users for commercial gain to its website located at the disputed domain name, which is confusingly similar to Complainant's mark. Based on a review of the website located at the Domain Name, Respondent is selling kitchen fixtures and other types of goods that are similar to those sold by Complainant.
4. Respondent is not using the disputed domain name in connection with any form of parody or other commentary or criticism of Complainant as permitted by paragraph 4(c)(iii) of the Policy, nor is it used for a moen “fan site,” nor is there any other evidence that would support any claim of fair use of the disputed domain name. Even if there were such evidence, paragraph 4(c)(iii) of the Policy prohibits Respondent from relying on any such fair use defense because Respondent's commercial use indicates an intent to procure commercial gain by misleadingly diverting consumers attracted by Complainant's valuable mark to Respondent's unauthorized websites.
Complainant contends that the disputed domain name was registered and is being used by Respondent in bad faith on the ground that the evidence shows that Respondent is using the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or the products on Respondent's websites. Respondent registered and uses the disputed domain name in order to attract Internet users to its website and the products found there. Respondent is using the website located at the disputed domain name to sell its own kitchen fixtures and other goods that are similar to the types of goods sold by Complainant in direct competition with Complainant. Its website provides no disclaimer to the viewer concerning the pages' lack of affiliation with Complainant. Respondent uses the MOEN mark because of its attraction to Internet users. In conclusion, Respondent's use creates a likelihood of confusion as to whether Complainant sponsors or endorses Respondent's website or the goods sold through the website.
Complainant also contends that the list of circumstances indicating bad faith in paragraph 4(b) of the Policy is non-exclusive. Other circumstances indicating bad faith registration and use include a violation of paragraph 2 of the Policy, which states that “it is [registrant's] responsibility to determine whether [its] domain name registration infringes or violates someone else's rights.” Complainant cites Slep-Tone Entertainment Corporation d/b/a. v. Sound Choice Accompaniment Tracks, FA93636 (NAF March 13, 2000). In addition, Complainant argues that Respondent has violated the section entitled “Representations and Warranties” in the OnlineNIC Service Terms.
Respondent did not reply to Complainant's contentions.
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. From the evidence presented in the case file, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English. Complainant has submitted a request that English is the language of the present proceedings because (a) the website located at <xmoen.com> includes an English version of the website, indicating that Respondent has some familiarity with the English language or desires to convey a familiarity and affiliation with the English language; (b) the disputed domain name as well as the trademarks that are being alleged to be infringed are in the English language and comprised of only English characters. Thus, Complainant submits that the additional cost of translation should not be placed on Complainant who is attempting to enforce its trademark rights in trademarks that are in the English language and comprised of only English characters; and (c) the Registrar OnlineNIC, Inc., is located in the United State and its website is entirely in English which makes no reference to the Chinese language.
After considering the circumstances of the present case and the submission of Complainant's request, the Panel is of the opinion that the language for the present proceedings shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
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.
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. 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, the Panel notes that (a) disputed domain name <xmoen.com> is entirely in English; and (b) the website of Respondent includes an English version. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond to Complainant's allegations. 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 proceeding shall be English and the decision will be rendered in English.
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 trademark 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 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 therefrom, 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:
Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the MOEN marks since November 1, 1955 in relation to plumbing products for the kitchen and bath. The Panel finds that Complainant has rights and continues to have such rights in the relevant MOEN marks.
The disputed domain name consists of Complainant's mark MOEN in its entirety, the English letter “x” attached to it in the front and the suffix “.com”. In assessing the degree of similarity between Complainant's trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant's MOEN marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user.
The Panel finds that the term “moen” in Complainant's MOEN marks is an arbitrary word and it is the distinctive portion of Complainant's marks and it has been reproduced in its entirety in the disputed domain name. The Panel finds the “moen” portion to be the most prominent part of the disputed domain name which will attract consumers' attention. The Panel accepts Complainant's contention that the simple inclusion of the English letter “x” in front of the distinctive MOEN term does not provide additional specification or sufficient distinction from Complainant or its MOEN marks. 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.
The Panel finds for Complainant on the first part of the test.
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant's contentions.
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 trademark 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 trademark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds 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 “moen” in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its MOEN marks enjoy a worldwide reputation including China, with regard to its plumbing products for kitchens and baths.
Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the MOEN mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
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 trademark 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 trademark 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.
The above circumstances are indicative of registration and use of the domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of the domain name in bad faith by respondent in the appropriate cases.
One important consideration in the Panel's assessment of whether Respondent has registered and used the domain name in bad faith is prior knowledge on the part of Respondent of Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of Complainant and its MOEN marks, as well as the market presence of Complainant and its marks in the Chinese market (evidenced by the registration of the MOEN marks in China in English and in Chinese), the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the domain name. The Panel's findings are further buttressed by the following evidence that (a) the term “moen” in Complainant's MOEN marks is an arbitrary mark with no descriptive significance to the underlying goods or services and is unlikely to be used by Respondent to describe its goods or services; (b) Respondent is infringing Complainant's trademark rights in the MOEN trademark by including the term moen in the name of its business, “Xiandai Moen”, which sells plumbing fixtures and other goods that are similar to those sold by Complainant and in direct competition with Complainant. On November 20, 2007, Complainant filed a trademark opposition in China against Respondent's Chinese Trademark Application No. 4512032 for the mark XIANDAIMOEN. The Opposition is currently pending with the Chinese Intellectual Property Office.
Consequently, in the absence of contrary evidence and satisfactory explanations from Respondent, the Panel finds that the term “moen” in Complainant's MOEN marks which have acquired a worldwide reputation in the kitchen and bath wares market, as previously stated is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant's allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.
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 was in competition with Complainant thereby giving Internet users the false impression that Respondent's domain name is in some way related to or associated with Complainant. Given the worldwide reputation of Complainant's MOEN marks in the kitchen and bath wares market, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is identical or confusingly similar to Complainant's widely known and distinctive trademark, intended to ride on the goodwill of the Complainant's trademark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website “www.xmoen.com” is either another of Complainant's websites targeted at the Chinese market or it is the site of official authorized partners 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 MOEN marks 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 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 <xmoen.com> be transferred to the Complainant.
Susanna H.S. Leong
Dated: February 11, 2009