Solar Turbines Incorporated v. Donald Manhard
Claim Number: FA1909001863406
Complainant is Solar Turbines Incorporated (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Donald Manhard (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <solarturbinesenergy.com> and <solarturbines-energy.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2019; the Forum received payment on September 23, 2019.
On September 26, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <solarturbinesenergy.com> and <solarturbines-energy.com> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 September 27, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2019 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@solarturbinesenergy.com, postmaster@solarturbines-energy.com. Also on September 27, 2019, 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 October 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s leading manufacturers of industrial gas turbines and turbomachinery packages for use in the oil and gas and power generation industries.
Complainant has common law rights in the SOLAR TURBINES mark through its extensive and continuous use of the mark in connection with the marketing of its products and services.
Complainant holds registrations for the SOLAR TURBINES trademark, which are on file with trademark authorities around the world, including the Mexican Institute of Industrial Property (“MIIP”), Registry No. 1332695, registered November 29, 2012, Algerian Registration No. 84099, issued January 14, 2012, and Bruneian Registration No. 045878, issued March 25, 2016.
Respondent registered the domain names <solarturbinesenergy.com> and <solarturbines-energy.com> on September 18, 2019.
The domain names are confusingly similar to Complainant’s SOLAR TURBINES mark.
Respondent has not been commonly known by the domain names.
Complainant has not authorized Respondent to use its SOLAR TURBINES mark.
Respondent also fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names.
Respondent fails to make any active use of the <solarturbines-energy.com> domain name.
Respondent uses the <solarturbinesenergy.com> domain name to conduct a phishing scheme by passing itself off as an executive officer of Complainant via a derivative e-mail address in order to gather confidential personal information from Internet users.
Respondent attempts to profit financially from this use of the domain name.
Respondent has neither rights to nor legitimate interests in either of the domain names.
Respondent’s use of the <solarturbinesenergy.com> domain name disrupts Complainant’s business.
Respondent has engaged in a pattern of bad-faith registration of domain names.
Respondent’s passive holding of the <solarturbines-energy.com> domain name constitutes bad faith registration and use.
Respondent knew of Complainant’s rights in the SOLAR TURBINES mark at the time of its registration of the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names have been registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the SOLAR TURBINES trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with trademark agencies worldwide. See, for example, Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum August 21, 2014):
Complainant has rights in the … mark under the Policy through registration with trademark authorities in numerous countries around the world.
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in jurisdictions (here Algeria, Brunei and Mexico) other than that in which Respondent resides or does business (here the United States). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶4(a)(i), we conclude from a review of the record that Respondent’s <solarturbinesenergy.com> and <solarturbines-energy.com> domain names are confusingly similar to Complainant’s SOLAR TURBINES mark. The domain names incorporate the mark in its entirety, with only elimination of the space between its terms and the addition, to one of them, of a hyphen, and, to both of them, the generic term “energy,’ which describes Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
See, for example, Eastman Chem. Co. v. Patel, FA 524752 (Forum September 7, 2005):
Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient [under Policy ¶4(a)(i)] to distinguish Respondent’s domain name from Complainant’s mark.
This is because domain name syntax does not permit the use of blank spaces, while the addition of a hyphen adds nothing consequential to the result, and every domain name requires a gTLD or other TLD. Moreover, inclusion of a term descriptive of a UDRP complainant’s business only underscores the confusing similarity of the domain name vis-à-vis the mark from which it was derived.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the domain names <solarturbinesenergy.com> and <solarturbines-energy.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the either of the domain names <solarturbinesenergy.com> or <solarturbines-energy.com>, and that Complainant has not authorized Respondent to use the SOLAR TURBINES mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Donald Manhard,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to make any use of the <solarturbines-energy.com> domain name. It is self-evident that failure to make any use of it cannot qualify as either a bona fide offering of goods or services by means of a domain name under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant also alleges that Respondent uses the solarturbinesenergy.com> domain name to pass itself off as an executive officer of Complainant via an e-mail address derived from the domain name in furtherance of a fraudulent “phishing” scheme from which it seeks to profit by obtaining and exploiting the confidential personal information of unsuspecting Internet users. It should go without saying that such a use of the domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See, for example, DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017):
Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has failed to make any active use of, or even to make demonstrable preparations to use, the disputed <solarturbines-energy.com> domain name at any time since it was registered. Moreover, we can envision no legitimate use to which the domain name could be put if Respondent were to make active use of it. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), finding bad faith registration and use of a domain name where a panel determined that:
[I]t is not possible to conceive of any plausible actual or contemplated use of the domain name by the Respondent that would not be illegitimate,….
See also VideoLink, Inc. v. Xantech Corp., FA1608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy¶4(a)(iii).
As to the <solarturbinesenergy.com> domain name, Respondent’s use of it to perpetrate a fraud on unsuspecting Internet users via a “phishing” scheme is the very essence of bad faith registration and use. See, for example, Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016):
Respondent uses the … domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the SOLAR TURBINES mark when it registered the contested <solarturbinesenergy.com> and <solarturbines-energy.com> domain names. This further illustrates Respondent’s bad faith in registering them. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … finds actual knowledge [and therefore bad faith registration of a disputed domain name] through the name used for the domain and the use made of it.
To the same effect, see also Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum January 9, 2017).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <solarturbinesenergy.com> and <solarturbines-energy.com> domain names be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 21, 2019
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