WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Genie Industries, Inc. v. Sheng Liang / Sarawina
Case No. D2014-0629
1. The Parties
The Complainant is Genie Industries, Inc. of Westport, Connecticut, United States of America ("USA"), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, USA.
The Respondent is Sheng Liang / Sarawina of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <genielifts.com> is registered with EPAG Domainservices GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 15, 2014. On April 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 6, 2014. 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
According to the Complainant, it is a manufacturer of work lifts and platforms, including man-lifts, stick booms, articulated booms, light towers and telehandlers. The Complainant was founded in 1966, and since 2002 has been a wholly owned subsidiary of Terex Corporation, a Delaware corporation with its principal place of business in Connecticut, USA.
The Complainant owns numerous trademarks comprising or incorporating GENIE, including the following which are registered in its name:
GENIE, United States Patent and Trademark Office (USPTO), registered July 23, 1991, registration number 1651334, international class 7;
GENIE, USPTO, registered August 27, 1991, registration number 1654719, international class 6;
GENIE AWP, USPTO, registered December 31, 1991, registration number 1670051, international class 7.
The Complainant's parent, Terex Corporation, is the registrant of the domain name <genielift.com>, created on July 26, 1995.
Nothing is known about the Respondent except for the names and addresses provided in order to register the disputed domain name, which was registered on December 25, 2001.
5. Parties' Contentions
The Complainant contends that it has rights in the registered trademarks listed in Section 4. above and has produced documentary evidence in the form of copies of online records obtained through the Trademark Electronic Search System (TESS). The Complainant states that it is the owner of approximately 109 trademark registrations comprising or containing GENIE in 62 countries or geographic regions of the world.
The Complainant contends that the disputed domain name is confusingly similar to the trademark GENIE and that the top level directory component ".com" of the disputed domain name should be disregarded in the determination of confusing similarity under the Policy. The disputed domain name contains the Complainant's trademark GENIE and the generic or descriptive word "lifts", which exacerbates confusing similarity because of its association with the Complainant's business. The Complainant has used the domain name <genielift.com>, which was created on July 26, 1995, in connection with its own website.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant asserts prima facie that it has never in any way authorised the Respondent to register or use the trademark GENIE. The Respondent has never used or made preparations to use the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services but has used it to display links to goods or services in competition with the Complainant. The Complainant says the Respondent's provision of monetized parking pages in connection with the disputed domain name is commercial. The Respondent's use of the disputed domain name is clearly not bona fide or noncommercial, but is misleading under the Policy. The Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent has registered the disputed domain name for the primary purpose of disrupting the business of a competitor.
The Complainant says that, on the evidence, the Respondent has used the disputed domain name in connection with monetized parking pages that display the text "genielifts.com" prominently at the top of the page. The pages display links to products and services related to the Complainant's area of business, such as "Genie Boom Lifts", "Trailer Mounted Lifts", "Aerial Work Platforms", "Manufacturing Systems" and "Industrial Automation". The Respondent is thus a competitor of the Complainant.
The Complainant contends that the Respondent remains responsible for any advertising or links that are placed on the website to which the disputed domain name resolves, including links or advertisements placed there by an automatic placement service. Furthermore the registrant of a domain name remains responsible for links or advertisements in the event that another party benefits from their placement.
The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website of the disputed domain name by confusing them into believing that the website may have the endorsement of the Complainant.
The Complainant has cited and quoted extensively from various previous decisions under the UDRP, including decisions related to its own trademark, that it wishes the Panel to consider as possibly having precedent value.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Panel is satisfied on the evidence presented that the Complainant has rights in the registered trademark GENIE.
The disputed domain name is <genielifts.com>. The generic Top-Level Domain (gTLD) designation ".com" may generally be disregarded in the consideration of confusing similarity under the Policy. What remains is easily read as the word pair "genie lifts". The first word "genie" is clearly identical to the Complainant's trademark GENIE. The second word "lifts" aptly encapsulates the business context of the Complainant's trademark and is not distinguishing but on the contrary is found to enhance the confusing similarity between the disputed domain name and the Complainant's trademark. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted and has made out a prima facie case to the effect that the Respondent has not been licensed or authorised in any way to use the Complainant's trademark and does not have rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating:
"(i) before any notice to you 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 (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 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 above circumstances are without limitation and rights or legitimate interests may be established by the Respondent in any other way satisfactory to the Panel.
The Complainant has stated, on the basis of its enquiries, that the Respondent's use of the disputed domain name is not for any bona fide offering of goods or services because the corresponding website functions to refer visitor to external links after having attracted them by the use of the Complainant's trademark. There is no evidence or reasonable likelihood that the Respondent is commonly known as "Genie Lifts". The evidence reasonably demonstrates that the disputed domain name is in use for the generation of revenue by referral of visitors on the basis of the Complainant's trademark and therefore is not in noncommercial or fair use.
The onus of proof remains upon the Complainant. On the evidence presented, and noting the absence of any Response, the Panel finds on the balance of probabilities that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has the onus of proving under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
The evidence shows the disputed domain name to resolve to a website displaying a photograph of what may be part of a track laying vehicle and some search topics, including prominently in the particular screen shot, "Genie Lifts", "Genie Boom Lifts", "Trailer Mounted Lifts", "Electric Lifts" and "Genie Scissor Lifts". Nine other "Related Searches" are offered relating to lifts, three of them using the word "Genie". Links offered on other pages of the website include "Manufacturing", "Lean Manufacturing", "Manufacturing Software", "Contract Manufacturing", "Manufacturing Process", "Manufacturing Systems", "Plastic Manufacturers" and "Industrial Automation", followed by another 12 headings of related links.
On the evidence, it may reasonably be concluded that the intended purpose of the disputed domain name is in the nature of a pay-per-click website. In this business model it is arranged that the website operator is paid a fee in return for the referral of Internet visitors to the websites of advertisers. A pay-per-click business may be entirely legitimate, and is commonly used as a way of defraying the costs of operating a website or as a profitable stand-alone business. In order to earn commissions for referrals, however, the website must attract visitors in the first place, in the expectation that some of them will follow the links offered. It cannot be legitimate to attract visitors by the use of another's trademark without authorisation or by confusing visitors or searchers into thinking it possible, if only initially, that they will visit or have arrived at the trademark holder's Internet presence, when in fact that will not happen.
The Panel finds on balance that in this case the Respondent has set out to attract Internet visitors by creating confusion intentionally between the disputed domain name and the trademark GENIE and has done so for the commercial purpose of generating pay-per-click revenue. The intention to confuse is exacerbated by the close resemblance of the disputed domain name <genielifts.com> to the Complainant's own domain name <genielift.com>, since it may reasonably be anticipated that on occasions, persons familiar with the Complainant's authentic domain name may nevertheless type "lifts" accidentally instead of "lift". The Panel finds that the disputed domain name has been used by the Respondent in bad faith in the terms of paragraph 4(b)(iv) of the Policy, and that it was registered for the bad faith purpose for which it has been used, fulfilling the requirements of paragraph 4(a)(iii) of the Policy.
The Complainant has additionally asserted bad faith on the part of the Respondent on the ground that the disputed domain name was registered for the primary purpose of disrupting the business of a competitor, namely the Complainant.
There is no evidence that the Respondent has any interests in lifts in association with the disputed domain name, but that is not necessary for the Respondent to constitute a competitor of the Complainant under the Policy. As the learned panelist stated in the decision in Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, "[t]he natural meaning of the word "competitor" is one who acts in opposition to another and the context does not imply or demand any restricted meaning such as a commercial or business competitor". The Respondent is found by the Panel to fall within the broad definition of a competitor of the Complainant and is found on the evidence and on balance to have registered and used the disputed domain name for the purpose of disrupting the Complainant's business by attempting to attract some of its intended traffic, constituting bad faith registration and use in the terms of paragraphs 4(b)(iii) and 4(a)(iii) of the Policy.
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 <genielifts.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 16, 2014