DECISION

VWR International, Inc. v. Jason Gang Liu

Claim Number:  FA0408000316388

PARTIES

Complainant is VWR International, Inc. (“Complainant”), 1310 Goshen Parkway, West Chester, PA 19380.  Respondent is Jason Gang Liu (“Respondent”), 607 Box, 20 Cheng Zhong Road, Shanghai, 201800.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vwrcn.com>, registered with Network Solutions, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 20, 2004; the Forum received a hard copy of the Complaint on August 20, 2004.

On August 25, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <vwrcn.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 16, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@vwrcn.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 22, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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."  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 makes the following assertions:

1. Respondent’s <vwrcn.com> domain name is confusingly similar to Complainant’s VWR mark.

2. Respondent does not have any rights or legitimate interests in the <vwrcn.com> domain name.

3. Respondent registered and used the <vwrcn.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, VWR International, Inc., is a global scientific laboratory distributor.  Complainant first registered the VWR mark on February 3, 1976 with the U.S. Patent and Trademark Office (“USPTO”) (Reg. No. 1,032,578) for distributorship services in the field of scientific apparatus and supplies.  Complainant also holds various other trademark registrations for the VWR mark, including Reg. No. 1,291,565 for scientific and test laboratory chemicals, paper filters, and cleaning preparations (August 28, 1984), and various pending registrations for the VWR INTERNATIONAL mark.

Complainant sent a cease and desist letter to Respondent on December 20, 2001.  Respondent replied stating that it had removed all links to Complainant’s <vwr.com> domain name at the <vwrcn.com> domain name.  Complainant also contacted Respondent and the Registrar, Affinity, concerning protecting copyrighted material under the Digital Millennium Copyright Act.  In addition, the Registrar sent a letter to Respondent on February 19, 2002 informing Respondent of measures it would take to comply with the Digital Millennium Copyright Act.

Respondent registered the <vwrcn.com> domain name on July 29, 1999.  Respondent’s resultant web page at the disputed domain name replicates Complainant’s web page at the <vwr.com> domain name.  In addition, Respondent has distributed business cards that indicate that he is Complainant’s employee.

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant’s has rights in the VWR mark as evidenced by its registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption).

Respondent’s <vwrcn.com> domain name is confusingly similar to Complainant’s VWR mark because the only difference is the addition of the letters “cn,” which does not significantly distinguish the domain name from the mark.  The Panel infers that the “cn” indicates Respondent’s country—China.  Therefore, the Panel finds that the domain name is confusingly similar to Complainant’s mark because the domain name is merely a combination of Complainant’s mark and an abbreviation for “China.”  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark …"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not submitted a Response in this matter.  In the absence of a Response, the Panel may accept any reasonable assertions by Complainant as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is trying to pass itself off as Complainant.  Besides completely co-opting Complainant’s website design, Respondent is passing itself off as Complainant’s agent.  Attempting to attract commercial business by passing one’s self off as a competitor is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial of fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Vivendi Universal Games, Inc. v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where Respondent copied Complainant’s website in order to steal account information from Complainant’s customers, that Respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).

Even though Respondent has identified itself as an agent of Complainant, the Panel accepts Complainant’s allegation that Respondent’s actions are intended to commit fraud.  The Panel finds that Respondent’s fraudulent representations (that Respondent is an agent of Complainant) do not demonstrate that Respondent is commonly known by the <vwrcn.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Web House USA, Inc. v. eDollarShop Hostmaster, FA 155180 (Nat. Arb. Forum June 10, 2003) (finding that Respondent was not “commonly known by” the <edollarshop.com> domain name, despite naming itself “eDollarShop,” because Respondent’s website was almost identical to Complainant’s “first in use” website and infringed on Complainant’s marks); see also Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is attempting to pass itself off as Complainant to steal Complainant’s customers.  The Panel finds that Respondent has registered the domain name primarily of the purpose of deceiving the relevant consuming public; therefore, this act of passing off demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  The Panel finds that Respondent’s stated action, removing links to Complainant on <vwrcn.com> does nothing to mitigate Respondent’s bad faith.  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . [i]n a nutshell, Respondent used the disputed domain name to perpetrate a fraud”).

The Panel also finds that, by trying to pass itself off as Complainant, Respondent is attempting to attract Internet users for commercial gain by creating confusion as to the source of the contents at the <vwrcn.com> domain name, which is bad faith pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website).

Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <vwrcn.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  October 6, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1294.html