WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cummins Inc. v. Deniss

Case No. D2021-0937

1. The Parties

The Complainant is Cummins Inc., United States of America (“United States”), represented by Mayer Brown, China.

The Respondent is Deniss, China.

2. The Domain Name and Registrar

The disputed domain name <cumminsz.com> (the “Domain Name”) is registered with BigRock Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 30, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2021.

The Center appointed Jon Lang as the sole panelist in this matter on May 18, 2021. 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

Founded in 1919, the Complainant designs, manufactures, distributes, and services diesel and natural gas engines and related technologies. Headquartered in Columbus, Indiana, United States, the Complainant currently employs about 55,000 people worldwide and serves customers in about 190 countries and territories, including China, through a network of about 600 company-owned and independent distributor locations and about 7,400 dealer locations. In 1995, the Complainant formed its first joint venture in China, and now has several joint ventures with leading Chinese companies.

The Complainant is currently listed on the New York Stock Exchange (NYSE: CMI), and is one of the world’s largest independent engine manufacturers. It has been listed as one of the Fortune 500 companies since 1955, and had total revenue in 2020 of USD 19.81 billion.

The Domain Name <cumminsz.com> was registered on August 19, 2019, and currently resolves to a website that purports to sell products such as generator sets and spare parts that overlap with the Complainant’s core business.

The following table contains details of some of the Complainant’s early trademark registrations (the CUMMINS trademarks or CUMMINS trademark as the context permits) in the United States, China, and Hong Kong, China, all of which pre-date registration of the Domain Name.

The Complainant has also registered various domain names which incorporate the CUMMINS trademark and through which the general public across the world obtain information about the Complainant’s business, e.g., <cummins.com> (created on September 18, 1990) and <cummins.com.cn> (created on June 19, 2003).

5. Parties’ Contentions

A. Complainant

The following is a brief summary of the main assertions of the Complainant.

Introduction

The Complainant’s products and services are and have always been carried on, supplied and marketed continuously and substantially under and/or by reference to the CUMMINS trademarks registered in various jurisdictions around the world. The Complainant’s first use of the Cummins brand dates back to 1919. Since then, the CUMMINS trademarks have acquired distinctiveness through extensive use by the Complainant.

The CUMMINS trademarks are highly or immediately recognisable to consumers as being associated with the Complainant and its business, and the Complaint is also based on the Complainant’s common law rights arising as a result of the use of such trademarks.

The Domain Name is identical or confusingly similar to the CUMMINS trademark

The Domain Name incorporates the CUMMINS trademark in its entirety, with the addition of the letter “z” at the end which capitalizes on a common typographical error that Internet users may make when searching for the Complainant due to the proximity of the letters “s” and “z” on a computer keyboard.

The CUMMINS trademark is the distinctive element of the Domain Name and the inclusion of the letter “z” does nothing to eliminate or lessen the degree of confusing similarity between the Domain Name and the CUMMINS trademark.

When considering whether or not a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) (“.com” in this case) may be disregarded.

The Domain Name is identical and/or confusingly similar to the CUMMINS trademark.

The Respondent has no rights or legitimate interests in respect of the Domain Name

The Respondent registered the Domain Name on August 19, 2019, which is 100 years after the CUMMINS trademark was first used.

The Complainant has not licensed, consented to, or otherwise authorized the Respondent to use any of the CUMMINS trademarks for the Domain Name or for any other reason. The Respondent is not an authorized representative, distributor, or partner of the Complainant.

There is no evidence to suggest that the Respondent has been commonly known by the Domain Name and nor is there any justification or apparent need for the Respondent to use the CUMMINS trademark in the Domain Name.

The Respondent is clearly aware of the Complainant and its CUMMINS trademarks.

The website to which the Domain Name resolves (the “Respondent’s Website”) displays the contact name “Deniss Khan”, a name that bears no relation to the Complainant’s famous CUMMINS trademark. It also displays logos which are almost identical to some of the CUMMINS trademarks, photos of generator sets and other products bearing the Complainant’s CUMMINS trademarks, and contains email addresses “sales@cumminsz.com” and “engineer@cumminsz.com” and other misleading content. The Complainant does not believe that the products being offered on the Respondent’s Website are genuine products of the Complainant.

Given the Complainant’s worldwide fame in the field of machinery and engines, the only possible reason for the Respondent registering the Domain Name is to mislead Internet users into believing that the Domain Name is associated with and/or operated by the Complainant and to drive traffic to its website for commercial gain.

The Respondent has no rights or legitimate interests in the Domain Name.

The Domain Name has been registered and is being used in bad faith

The Respondent is unfairly and intentionally taking advantage of, and exploiting without authorization, the reputation and distinctiveness of the CUMMINS trademarks to confuse Internet users into believing that the Respondent’s Website is related to the Complainant, or is otherwise authorized by the Complainant, so as to attract Internet users to its website.

Given the substantial fame of the Complainant throughout the world, it is unlikely that the Respondent was not aware of the Complainant and the CUMMINS trademarks at the time of registration of the Domain Name. The Respondent’s registration was solely motivated by a desire to take advantage of the Complainant’s reputation in the CUMMINS trademarks and thereby make undue profits by attracting business opportunities to the Respondent’s Website.

Registration and use of the Domain Name must involve mala fides where its registration and use have been and continue to be made in the knowledge of the Complainant’s prior rights and in circumstances where the Respondent did not seek permission from the Complainant.

It is reasonable to infer that the Domain Name intentionally incorporated the CUMMINS trademark in its entirety for any of the following purposes: (i) selling it for profit; (ii) earning some form of pay-per-click revenue; and/or (iii) to mislead and confuse Internet users into believing that the Domain Name is associated with the Complainant and its CUMMINS trademarks for commercial gain, for example, to divert the Complainant’s customers or potential customers to the Respondent’s Website for commercial gain.

The Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.

A. Identical or Confusingly Similar

The Complainant is the proprietor of the CUMMINS trademarks and clearly has rights in them.

Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the entire textual element of the CUMMINS trademarks listed above but with the letter “z” added at the end. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”(section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

The CUMMINS trademark is incorporated in its entirety and clearly recognizable within the Domain Name. The addition of the letter “z” does little to diminish the visual impression created by the Domain Name, namely that the CUMMINS trademark is its dominant element. The addition of the letter “z” does not prevent the Domain Name being confusingly similar to the CUMMINS trademark.

The Panel finds that the Domain Name is confusingly similar to the CUMMINS trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.

A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not, as here, licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. The Respondent has used the confusingly similar Domain Name to attract Internet users to the Respondent’s Website which displays logos almost identical to some of the CUMMINS trademarks, photos of generator sets and other products bearing the Complainant’s CUMMINS trademarks, and other misleading content. From a review of Annex 16 to the Complaint, the Respondent’s Website also displays logo’s of third parties likely to be active in a similar field of activity to that of the Complainant. Moreover, the Complainant does not believe that products purporting to be those of the Complainant being offered on the Respondent’s Website, are in fact genuine products of the Complainant. These circumstances do not suggest a bona fide offering of goods or services, or a legitimate noncommercial or fair use.

The very purpose in the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. The Respondent has not come forward with a Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything it could say that could justify its registration and use of the Domain Name in the manner described.

There is no evidence before this Panel suggesting that the Respondent might have rights or legitimate interests in the Domain Name. The evidence suggests the contrary.

Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There can be little doubt that the Respondent was aware of the Complainant’s CUMMINS trademark at the time of registration of the Domain Name, given the reputation of the Complainant’s trademark and the use to which the Domain Name has been put.

Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Since this latter scenario appears to reflect what the Respondent has done here and in these circumstances, there is no need to go on to consider other paragraph 4(b) scenarios. This is particularly so given that at a more general level, it seems clear that the Respondent has sought to take unfair advantage of and/or to abuse the Complainant’s CUMMINS trademarks and such behaviour is broadly understood to constitute bad faith for the purposes of the Policy, regardless of any precise match with any of the paragraph 4(b) scenarios.

Furthermore, the nature of the Domain Name, comprising the Complainant’s widely-known CUMMINS trademark and an additional letter “z”, supports a finding of bad faith in this case. See section 3.2.1 of the WIPO Overview 3.0.

In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <cumminsz.com> be transferred to the Complainant.

Jon Lang
Sole Panelist
Date: June 1, 2021