Solar Turbines Incorporated v. Harneet Gill / GGC
Claim Number: FA1911001871148
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Harneet Gill / GGC (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solarturbineservices.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil Jiménez as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2019; the Forum received payment on November 13, 2019.
On November 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <solarturbineservices.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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@solarturbineservices.com. Also on November 19, 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.
A timely Response was received and determined to be complete on December 9, 2019.
Complainant submitted an Additional Submission on December 11, 2019 that was deemed to be in compliance with Supplemental Rule 7.
On December 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil Jiménez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Solar Turbines Incorporated, claims that said company is one of the world’s leading designers and manufacturers of industrial gas turbines and turbomachinery packages for use in the oil and gas and power generation industries. Its activities began in the 1920s, through its predecessors Prudden-San Diego Airplane Company and Solar Aircraft Company. In November 2017, Solar Turbines celebrated its 90th anniversary.
Complainant mentions that it owns the domain name SOLARTURBINES.COM, and also owns the trademarks and trade names SOLAR TURBINES and SOLAR. Solar Turbines’ rights in its SOLAR TURBINES mark date back to at least as early as the 1970s, and its rights in the SOLAR mark date back to at least as early as 1950.
Solar Turbines offers products and services under its SOLAR TURBINES and SOLAR marks in two major industries: oil and gas, and power generation. Solar Turbines’ products and services are offered in numerous locations worldwide, namely, North America, South America, Europe, Asia, Australia, the Middle East, and Africa. Solar Turbines’ affiliated companies in various locations worldwide include Solar Turbines Europe, Solar Turbines West-Africa, Solar Turbines Canada, Turbinas Solar in Mexico, Solar Turbines Services of Argentina, Solar Turbines Trading Services in China, Solar Turbines India, Solar Turbines Australia, and Solar Turbines Saudi Arabia, among many others.
Complainant asserts that it owns common-law trademark rights in its SOLAR TURBINES and SOLAR marks based on its extensive and continuous use of those marks for decades and the tremendous commercial success of the products and services Complainant offers under its marks as described before. Moreover, in addition to its strong common-law rights, Complainant claims that it owns numerous registrations for the SOLAR TURBINES mark and variations thereof in several countries around the world.
According to Complainant, Respondent registered the Domain Name on October 2, 2019, long after Complainant began using its SOLAR TURBINES and SOLAR marks, long after Complainant registered its marks in various countries around the world, and long after Complainant’s SOLAR TURBINES and SOLAR marks became well-known and famous in the energy industries of oil and gas and power generation. Respondent also registered the Domain Name long after Complainant registered and began using its domain name SOLARTURBINES.COM.
Lastly, Complainant states that the Domain Name communicates an immediate connection to Complainant and its business because it fully incorporates Complainant’s SOLAR TURBINES and SOLAR marks and adds the generic and/or descriptive term “services” that directly relates to Complainant’s business. The Domain Name is confusingly similar to Complainant’s SOLAR TURBINES mark because it contains Complainant’s mark in its entirety and the term “services” that directly relates to Complainant’s business.
B. Respondent
In turn, Respondent states that the domain <solarturbineservices.com> is not similar to the trademarks and tradenames SOLAR TURBINES and SOLAR because <solarturbineservices.com> has an entirely different definition of product offerings vis-à-vis SOLARTURBINES.COM.
Respondent also argues that it has legitimate rights to the disputed domain name due to the rightful purchase of said domain name and the good faith intent to use it. The domain name was purchased/registered out of good faith with no intent to obtain profit from the name “SOLAR TURBINES”. The domain was rightfully purchased from Godaddy.com, and has yet to make any action describing this domain as “registered/purchased our of bad faith”.
Based on the foregoing, Respondent requests that the remedy sought by the Complainant be denied.
C. Additional Submissions
Complainant referred to the response submitted by the Respondent to the Complaint by restating that the domain name SOLARTURBINESERVICES.COM is confusingly similar to Complainant’s registered marks SOLAR TURBINES and SOLAR, and Complainant’s rights long predate Respondent’s registration of the Domain Name in October 2019.
Complainant also mentioned in its additional submission that Respondent’s registration and use of the Domain Name for a pay-per-click website that features sponsored-link advertisements for various commercial websites including competing websites in the energy industry and that displays the invitation “Would you like to buy this domain?” does not constitute a legitimate interest under the UDRP. Respondent’s registration and use of the Domain Name constitutes bad faith under the UDRP and prior UDRP decisions.
According to Complainant, Respondent’s claim that the Domain Name is not confusingly to Complainant’s SOLAR TURBINES mark because the term “services” does not identify any of Complainant’s offerings is frivolous. It has been determined in several cases in the past that the addition of a generic or descriptive term to a mark does not avoid confusing similarity with that mark and in fact enhances confusing similarity. Moreover, the term “services” has an obvious and immediate connection to Complainant’s business because Complainant offers, and has offered for decades, a wide range of services under its SOLAR TURBINES and SOLAR marks.
In addition, Respondent’s claim that his purchase of the Domain Name establishes a legitimate interest has no merit. The fact that Respondent was able to register the Domain Name because it was available does not confer any rights to Respondent, and such baseless claims have been uniformly rejected by UDRP Panels. Respondent did not offer any evidence that his registration and use of the Domain Name do not constitute bad faith under the UDRP. Rather, Respondent simply makes self-serving claims that he registered the Domain Name in good faith. Respondent’s statements, however, are not evidence and do not overcome the record that clearly shows Respondent’s use of the Domain Name for a pay-per-click website, which is a classic type of bad faith. Finally, Respondent’s claim that he does not intend to profit from Complainant’s SOLAR TURBINES mark in nothing more than an admission that he registered the Domain Name in bad faith with knowledge of Complainant’s SOLAR TURBINES mark.
Complainant is the owner of the trademarks SOLAR TURBINES and SOLAR. In the present case, Complainant has both common law rights derived from the usage of said names - usage that was duly proven in the Complaint – and trademark rights derived from the registration of the trademarks SOLAR TURBINES and SOLAR in several jurisdictions, according to the evidence submitted with the Complaint.
Complainant further contends that Respondent is using the disputed domain name for a pay-per-click website provided by the registrar that features search links that connect to pages displaying sponsored-link advertisements for various commercial websites including competing websites in the energy industry. The website also displays the invitation “Would you like to buy this domain?” that connects to GoDaddy’s website offering its domain brokerage services for the Domain Name, which strongly suggests that Respondent intends to sell the Domain Name. The general attempt to sell a disputed domain name may not evince rights or legitimate interests under Policy in Paragraphs 4(c)(i) and (iii). See A Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Complainant provided screenshots of the disputed domain name’s resolving webpage which features an invitation to buy the disputed domain name. Thus, the Panel agrees with Complainant and finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant also claims that Respondent registered and uses the <solarturbineservices.com> domain name in bad faith. Specifically, Complainant claims Respondent attempts to sell the disputed domain name to the general public. Attempting to sell a disputed domain name to the general public can evince bad faith registration and use per Policy in Paragraph 4(b)(i). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018).
Furthermore, Complainant argues that Respondent attempts to attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to third-party websites, some of which compete with Complainant. Using a confusingly similar domain name to commercially benefit via, competing, pay-per-click links can evince bad faith registration and use per Policy in Paragraph 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent must have had actual and constructive knowledge of Complainant’s SOLAR TURBINES mark. Complainant claims that due to Respondent’s use of Complainant’s famous SOLAR TURBINES mark in its entirety, Respondent had actual knowledge of Complainant’s SOLAR TURBINES mark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark, and this constitutes bad faith under Policy in Paragraph 4(a)(iii).
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case there is no doubt for the Panel as regards the fact that the domain name to which the dispute refers is identical to the trademarks SOLAR TURBINES and SOLAR, and also with the tradename SOLAR TURBINES (which turns out to be the name of the entity who filed the Complaint). Now, the bottom line in this point relies on whether Complainant has common law rights over the trademark SOLAR TURBINES that entitles it to obtain a favorable decision and, therefore, the transfer of the domain under dispute. Let us elaborate a little bit around trademarks:
A trademark is a sign (a word, a design, or a combination of both) used in commerce to identify products or services in the market in order to individualize them from the same or similar products or services of competitors in the market. Generally speaking, trademarks are registered in order to secure exclusive rights thereon. However, in countries like the United States (country of origin and residence of the parties to this process) it is imperative to use trademarks in order to obtain and maintain rights and, in addition, the applicable regulations provide for common law rights over trademarks, which arise from actual and continued use of a mark. Common law rights may allow the common law user to successfully challenge a registration or application, and also the usage thereof by a non-authorized third party.
That said, the Panel finds: (i) that Complainant has asserted common law trademark rights in its name SOLAR TURBINES; (ii) that the Rules do not require that the Complainant's trademark be registered before a government authority or agency for such a right to exist, and (iii) that the name “SOLAR TURBINES ” has sufficient secondary association with Complainant. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
But in addition, the Panel finds that in addition of its fully demonstrated common law rights in the trademark SOLAR TURBINES in the United States, Complainant also demonstrated that it is the owner of registrations for the trademarks SOLAR TURBINES and SOLAR in several jurisdictions such as Mexico, Algeria, Brunei and Canada. Moreover, the trademark SOLAR is also registered in the United States, according to the evidence submitted with the Complaint.
Having established that Complainant has common law trademark rights in its name, and that the trademarks SOLAR TURBINES and SOLAR are duly registered in several countries, the next consideration to make is whether the domain name <solarturbineservices.com> is identical or confusingly similar with Complainant’s name. The Panel finds that the addition of the word “SERVICES” to the disputed domain <solarturbineservices.com> does not contribute to establish a difference between said domain and the trademarks SOLAR TURBINES and SOLAR, extensively used and registered by the Complainant, and well known and famous in the energy industries of oil and gas and power generation. The addition of generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy in Paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see alsoTrip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy in Paragraph 4(a)(i) analysis).
Therefore, the Panel finds that the requirement of the Policy in paragraph 4(a)(i) is satisfied.
Complainant argues that Respondent has no rights or legitimate interests in the <solarturbineservices.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the SOLAR TURBINES mark and is not commonly known by the disputed domain name.
As mentioned before, the fact that Respondent is using the disputed domain name for a pay-per-click website provided by the registrar that features search links that connect to pages displaying sponsored-link advertisements for various commercial websites including competing websites in the energy industry clearly indicates that Respondent’s use of the disputed domain name does not constitute 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). The website also displays the invitation “Would you like to buy this domain?” that connects to GoDaddy’s website offering its domain brokerage services for the Domain Name, which suggests that Respondent intends to sell the Domain Name. This clearly indicates that Respondent’s use of the disputed domain name does not constitute either 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).
Further, Complainant argues that the <solarturbineservices.com> domain name resolves to a website that is offering advertisements. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies Paragraphs 4(c)(i) & (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016).
It is clear for the panel, after a thorough review of the documentation and evidence submitted to the case, that the Complainant is the type of entity which, due to the well-known condition of its trademarks, the efforts it makes to position and promote them and the recognition it gains in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” just to let registrants share the sales revenues obtained by the legitimate owners of the trademarks.
Considering the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <solarturbineservices.com>.
According to Paragraph 4(b) of the Policy, when certain circumstances are present in a given case they shall be evidence of the registration and use of a domain name in bad faith. Among such circumstances the Policy mentions in Paragraph 4(b)(iv) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant 's mark as to the source, sponsorship, affiliation, or endorsement of you’re the Respondent’s site or location or of a product or service on the Respondent’s web site or location.
In the present case, the extreme similarity of the disputed domain name with the registered, well-known and famous trademarks SOLAR TURBINES and SOLAR clearly indicates that there is a prima facie intention of the Respondent to attract internet users for commercial gain. The identical reproduction of a distinctive trademark within a domain name is hardly the result of casualty, and does suggest a clear intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark, and to benefit from said confusion. As the Examiner sees it, the statement made by the Respondent in his response only ratifies the initial intention with which he registered the domain name, it being the same intention of all those who try to take for themselves the main portion of a domain name property of a third party: To benefit from the efforts made by the owners of trademarks to make them known, valuable and recognized.
Using a confusingly similar domain name to commercially benefit through competing pay-per-click links can evince bad faith registration and use according to Policy in Paragraphs 4(b)(iii) and/or (iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy in Paragraph 4(b)(iii)”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy in Paragraph 4(b)(iv).”).
In light of the foregoing, the Panel determines that the Policy requirement in Paragraph 4(b) is met as regards the fact that the domain name <solarturbineservices.com> was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solarturbineservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil Jiménez, Panelist
Dated: December 25, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page