Upsemerson.com

The timeline behind upsemerson.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Emerson Electric Co. v. Li Ming Li / Li Ming Claim Number: FA1711001760271 PARTIES Complainant is Emerson Electric Co. (“Complainant”), represented by CSC Digital Brand Services AB, Sweden. Respondent is Li Ming Li / Li Ming (“Respondent”), People’s Republic of China. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <upsemerson.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd. PANEL The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on November 29, 2017; the Forum received payment on November 29, 2017. On November 29, 2017, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <upsemerson.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@upsemerson.com. Also on December 5, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. On December 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant is a global manufacturer of industrial, commercial, and consumer technology- and engineering-related goods and services. Complainant uses the EMERSON mark in conjunction with its business. Complainant registered the EMERSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 86,891,644, registered July 25, 2017). Complainant also registered the EMERSON mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 237302, registered Dec. 25, 1984), the European Union Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 000100651, registered Mar. 5, 1999), and the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. UCA2286, Jan. 25, 1934). Respondent’s <upsemerson.com> is confusingly similar to Complainant’s EMERSON mark because it incorporates the mark in its entirety, adding the descriptive term “ups,” an abbreviation for “Uninterruptible Power Systems,” and the “.com” generic top level domain (“gTLD”). Respondent does not have rights or legitimate interests in <upsemerson.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the EMERSON mark. Respondent is not affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <upsemerson.com> resolves to a website attempting to pass itself off as complainant by selling competing products under Complainant’s EMERSON mark and logo, “which are at best Complainant’s own products and at worst, counterfeit products.” Respondent registered and is using <upsemerson.com> in bad faith. The disputed domain name attempts to attract internet users to Respondent’s website for commercial gain by offering competing and counterfeit products under Complainant’s mark and logo. Respondent registered <upsemerson.com> with actual knowledge of Complainant and its rights to the EMERSON mark. B. Respondent Respondent failed to submit a Response in this proceeding. Supported Language Request Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of this matter. Such additional delay, considering Complainant’s allegations that Respondent is using the resolving website to sell products branded with the EMERSON trademark which have the potential of being counterfeit, poses continuing risk to Complainant and consumers seeking complainant and or its products. The disputed domain name is comprised of Latin characters. The resolving website features various words in English such as “uninterrupted” and “respond quickly to your service needs.” The term EMERSON, which is the dominant portion of the disputed domain name, does not carry any specific meaning in the Chinese language. In light of the Respondent’s use of the disputed domain name and Respondent’s decision to register a domain name that misappropriates the famous EMERSON mark and brand, it would unduly burden Complainant to have to arrange and pay for translation where Respondent has demonstrated behavior that disrupts Complainant’s business and has already required Complainant to devote significant time and resources to addressing this matter. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “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.”). Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English. FINDINGS Complainant, Emerson Electric Co., is a global manufacturer of industrial, commercial, and consumer technology- and engineering-related goods and services. Complainant uses the EMERSON mark in conjunction with its business. Complainant registered the EMERSON mark with the USPTO (Reg. No. 86,891,644, registered July 25, 2017); the SAIC (e.g., Reg. No. 237302, registered Dec. 25, 1984); the EUIPO (e.g., Reg. No. 000100651, registered Mar. 5, 1999); and the CIPO (e.g., Reg. No. UCA2286, Jan. 25, 1934). Respondent’s <upsemerson.com> is confusingly similar to Complainant’s EMERSON mark. Respondent, Li Ming Li / Li Ming, registered <upsemerson.com> on June 17, 2013. Respondent does not have rights or legitimate interests in <upsemerson.com>. Respondent’s <upsemerson.com> resolves to a website attempting to pass itself off as complainant by selling competing products under Complainant’s EMERSON mark and logo, “which are at best Complainant’s own products and at worst, counterfeit products.” Respondent registered and is using <upsemerson.com> in bad faith. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (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. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Identical and/or Confusingly Similar Complainant has rights in the EMERSON mark through registration with multiple trademark authorities, including the USPTO and SAIC. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Respondent’s <upsemerson.com> is confusingly similar to Complainant’s EMERSON mark because it incorporates the mark in its entirety, adding the descriptive term “ups,” an abbreviation for “Uninterruptible Power Systems,” and the “.com” gTLD. Rights or Legitimate Interests Respondent does not have rights or legitimate interests in <upsemerson.com>. Complainant has not authorized or licensed Respondent to use the EMERSON mark. Respondent is not affiliated with Complainant. Respondent is not commonly known by the disputed domain name. The WHOIS information for the domain name lists the Registrant as “Li Ming Li “ of “Li Ming Li.” “Given the WHOIS contact information for the disputed domain [name], one can infer that [r]espondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <upsemerson.com> resolves to a website selling competing and possibly counterfeit products under Complainant’s EMERSON mark and logo. A respondent’s attempt to pass itself off as a complainant shows a lack of rights or legitimate interests in a domain name. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off… As such the Panellist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”). Registration and Use in Bad Faith Respondent registered and is using <upsemerson.com> in bad faith under Policy ¶ 4(b)(iv). Respondent attempts to attract internet users to its website for commercial gain by offering competing and possibly counterfeit products under Complainant’s mark and logo. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). A respondent’s attempt to pass itself off as the complainant or retail counterfeit products under the complainant’s mark shows bad faith registration and use. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Respondent registered <upsemerson.com> with actual knowledge of Complainant and its rights to the EMERSON mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (Panels have found actual knowledge, and Policy ¶ 4(a)(iii) bad faith, “through the name used for the domain and the use made of it.”). DECISION Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <upsemerson.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: January 11, 2018 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.