Swagelok Company v. Creat Sign / Personal
Claim Number: FA2106001952104
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, USA. Respondent is Creat Sign / Personal (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelokinstrument.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2021; the Forum received payment on June 22, 2021.
On June 22, 2021, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <swagelokinstrument.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 June 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2021 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@swagelokinstrument.com. Also on June 25, 2021, 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 July 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Swagelok Company, is an industry leader in the development, manufacture, and distribution of advanced and innovative fluid system products, services and solutions to a wide range of global industries. Complainant maintains registration of its SWAGELOK mark with the United States Patent and Trademark Office (USPTO). (e.g. Reg. No. 835,359 – Registered on Sept. 19, 1967). See Compl. Annx. 6. The disputed domain name, <swagelokinstrument.com>, is identical or confusingly similar to Complainant’s SWAGELOK mark because it wholly incorporates Complainant’s SWAGELOK mark while adding in the term “instrument” to the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have any rights or legitimate interests in the <swagelokinstrument.com> domain name because Respondent is not commonly known by the <swagelokinstrument.com> domain name. Respondent is not using the <swagelokinstrument.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <swagelokinstrument.com> domain name to divert users away from Complainant’s website to sell products in competition with Complainant.
Respondent registered and uses the <swagelokinstrument.com> domain name in bad faith because Respondent is using the <swagelokinstrument.com> domain name to disrupt Complainant’s business for Respondent’s own commercial benefit by offering goods in competition with Complainant. Respondent acted with actual knowledge of Complainant’s rights in the SWAGELOK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an industry leader in the development, manufacture, and distribution of advanced and innovative fluid system products, services and solutions to a wide range of global industries.
2. Complainant has established its trademark rights to the SWAGELOK mark by virtue of the registration of the SWAGELOK mark with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. No. 835,359 – Registered on Sept. 19, 1967).
3. Respondent registered the <swagelokinstrument.com> domain name on April 1, 2021.
4. Respondent is using the <swagelokinstrument.com> domain name to divert internet users away from Complainant’s website to sell products in competition with Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the SWAGELOK mark through its registration of the SWAGELOK mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration certificates in the SWAGELOK mark. (e.g. Reg. No. 835,359 – Registered on Sept. 19, 1967). See Compl. Annx. 6. Therefore, the Panel finds that Complainant has rights in the SWAGELOK mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SWAGELOK mark. Complainant argues that the <swagelokinstrument.com> domain name is identical or confusingly similar to Complainant’s SWAGELOK mark because the <swagelokinstrument.com> domain name wholly incorporates Complainant’s SWAGELOK mark while adding a generic word and the “.com” gTLD to form a domain name. A domain name may be found to be identical or confusingly to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of words. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The added word here is “instrument”. Therefore, the Panel finds that the <swagelokinstrument.com> domain name is identical or confusingly similar to the SWAGELOK mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s SWAGELOK trademark and to use it in its domain name, adding the generic word “instrument” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <swagelokinstrument.com> domain name on April 1, 2021;
(c) Respondent is using the <swagelokinstrument.com> domain name to divert internet users away from Complainant’s website to sell products in competition with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have any rights or legitimate interests in the <swagelokinstrument.com> domain name domain name because Respondent is not commonly known by the <swagelokinstrument.com> domain name. Evidence that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii) may be found where the identifying WHOIS information is not related to the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information lists “Creat Sign” as the registrant. See Amend. Compl. Annx. 1. Nothing else in the record indicates that Respondent is not known by the <swagelokinstrument.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <swagelokinstrument.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <swagelokinstrument.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <swagelokinstrument.com> domain name to divert users away from Complainant’s website and offering products that compete with Complainant. Use of a domain name to sell products that compete with a complainant may be evidence of a domain name not being used in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). The resolving website purports to sell valves that are manufactured by entities that directly competes with Complainant. See Compl. Annx. 3. Therefore, the Panel finds that Respondent is not using the <swagelokinstrument.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <swagelokinstrument.com> domain name in bad faith because Respondent is commercially benefitting from the confusion as to the association between the <swagelokinstrument.com> domain name and Complainant by selling products in competition with Complainant. Use of a domain name that creates a likelihood of confusion while offering competing services for commercial gain may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Here, users trying to access Complainant’s website might be confused as to the association between Complainant and the <swagelokinstrument.com> domain name because Respondent is selling products that compete with Complainant. See Compl. Annx. 3. Therefore, the Panel finds that Respondent registered and uses the <swagelokinstrument.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent acted with actual knowledge of Complainant’s rights in the SWAGELOK mark. Actual knowledge may be found where a respondent uses a domain name to offer products that compete with a complainant. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, Respondent uses the <swagelokinstrument.com> domain name to sell products from manufacturers that compete with Complainant. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SWAGELOK mark, thus acting in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swagelokinstrument.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 2, 2021
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