WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Littelfuse, Inc. v. yang guang, shenzhenshideerdianziyouxiangongsi
Case No. DTM2016-0001
1. The Parties
The Complainant is Littelfuse, Inc. of Chicago, Illinois, United States of America (“United States” or “U.S.”), represented by Kacvinsky, Daisak Bluni, PLLC, United States.
The Respondent is yang guang, shenzhenshideerdianziyouxiangongsi of Shenzhen, Guangdong, China.
2. The Domain Name and Registry
The disputed domain name <littelfuse.tm> is registered with NIC.TM (the “Registry”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on December 20, 2016, and in hardcopy on December 28, 2016. On December 20, 2016, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On December 23, 2016 and December 27, 2016, the Registry 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 Dispute Resolution Policy for Domain Names registered in .TM (the “Policy”), the Rules for Domain Name Dispute Resolution for.TM Names (the “Rules”), and the WIPO Arbitration and Mediation Center’s Supplemental Rules for Domain Name Dispute Resolution Policy for .TM Names (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 December 29, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on January 26, 2017. 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
The Complainants Littelfuse, Inc. was founded in 1938 in the United States. It is a supplier of circuit protection products. It maintains a direct sales and marketing force, with operations throughout the world, including, the United Kingdom of Great Britain and Northern Ireland, Germany, Spain, Brazil, Singapore, Japan, Republic of Korea, China and India. In addition, the Complainant has a network of distributors throughout the world.
The Complainant owns various LITTELFUSE trademarks around the world, including International trademark registration No. 499,117, in Classes 9 and 11, registered on October 16, 1985. The Complainant is also the proprietor of LITTELFUSE trademark in China, registration No. 7746442, in Class 9, registered on March 21, 2011.
The Respondent is an individual or company in Shenzhen, China. The disputed domain name <littelfuse.tm> was registered on December 17, 2013.
The disputed domain name <littelfuse.tm> redirects to “www.delfuse.com” which states that it is the website of Shenzhen Deer Electronics Co Ltd and offers for sale circuit protection products of various companies that compete directly with the Complainant’s line of products.
5. Parties’ Contentions
The Complainant’s contentions are set out below.
Identical or confusingly similar
The Complainant submits that the disputed domain name <littelfuse.tm> is identical or confusingly similar to the LITTELFUSE trademark. The disputed domain name contains the trademark LITTELFUSE in its entirety as the distinctive part of the disputed domain name. The country code Top-Level Domain (“ccTLD”) “.tm” does not affect the identity or confusing similarity.
No rights or legitimate interests
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for LITTELFUSE. The Respondent has not made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, but using the disputed domain name for financial gain by diverting consumers looking for the Complainant’s products. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the LITTELFUSE trademark given its worldwide reputation and the Respondent acquired the disputed domain name only to disrupt the business of the Complainant, its competitor and to attract users to its website, by creating a likelihood of confusion with the Complainant’s trademark.
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name <littelfuse.tm>, other than the ccTLD “.tm”, is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s LITTELFUSE trademark in full. The disputed domain name is therefore identical to the Complainant’s registered trademark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) in relation to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
The Policy is identical to the UDRP with respect to the second element and the Panel considers it may have reference to the WIPO Overview 2.0 in this respect.
Paragraph 4(c) of the Policy sets out ways in which a Respondent may establish they have rights and legitimate interests. These are:
“(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 Complainant’s brand is well known in its industry worldwide. The Respondent has no business or any kind of relationships (e.g, licensor, distributor) with the Complainant. The Panel accepts the Complainant’s contention that the Respondent’s use of the disputed domain name to redirect Internet users to a website offering goods in competition with those of the Complainant does not amount to a bona fide offering of goods or services within the meaning of the Policy. The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint to assert any rights or interests and accordingly the Panel finds that the Respondent does not have any rights or legitimate interests.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <littelfuse.tm> was registered and is being used in bad faith. The Policy only requires a finding that the disputed domain name was registered or is being used in bad faith. However, in this case, the Panel finds that both heads are satisfied.
The Respondent must have known of the Complainant when it registered the disputed domain name given the Complainant’s worldwide reputation and its presence in China. The Panel finds it difficult to believe that the word “littelfuse” was chosen at random particularly given the website redirects to a website selling products competing with the Complainant.
Having examined all the circumstances of the case, the Panel finds that the Respondent registered and is using the disputed domain in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied.
For the foregoing reasons, in accordance with paragraphs 4(h) of the Policy and 15 of the Rules of Procedure, the Panel orders that the disputed domain name, <littelfuse.tm> be transferred to the Complainant.
Date: February 10, 2017