Balon Corporation v. Bolon Valves Company c/o Bolon
Claim Number: FA0712001125156
Complainant is Balon Corporation (“Complainant”), represented by Charles
L. McLawhorn, III of McAfree & Taft A Professional Coporation,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bolon-valves.com >, registered with Onlinenic, Inc.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 28, 2007; the National Arbitration Forum received a hard copy of the Complaint December 31, 2007.
On December 28, 2007, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <bolon-valves.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. verified that Respondent is bound by the Onlinenic, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 15, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 4, 2008, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <bolon-valves.com>, is identical to or confusingly similar to Complainant’s BALON mark.
2. Respondent has no rights to or legitimate interests in the <bolon-valves.com> domain name.
3. Respondent registered and used the <bolon-valves.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Balon Corporation, produces valves for the oil and gas industry. Complainant has marketed its ball, check, and needles valves under the BALON mark continuously since 1965. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) on February 17, 1976 (Reg. No. 1,033,618). Complainant also markets its products on website that resolves from the <balon.com> domain name.
Respondent registered the <bolon-valves.com> domain name April 11, 2006. Respondent has been using the disputed domain name to host a website that imitates Complainant’s own website.
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 will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Panel finds that Complainant’s registration of the BALON mark with the USPTO establishes its rights to the mark under Policy ¶ 4(a)(i). 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 [or] have acquired secondary meaning.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
The <bolon-valves.com> domain name is different from Complainant’s BALON mark in three insignificant ways pursuant to Policy ¶ 4(a)(i). First, Respondent replaced the “a” in Complainant’s mark with an “o.” The replacement of one letter of a registered mark with another, especially when the change has no consequence on the phonetic pronunciation, does not distinguish the disputed domain name from the registered mark. Second, Respondent has added the generic term “valves,” which directly relates to Complainant’s valve business. Third, Respondent has added the generic top-level domain (“gTLD”) “.com” which is insignificant because all domain names are required to have a top-level domain. Therefore, the Panel concludes that the <bolon-valves.com> domain name is confusingly similar to Complainant’s BALON mark under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <bolon-valves.com> domain name. Complainant has the burden of proof for this allegation persuant to Policy ¶ 4(a)(ii). Once Complainant has made a prima facie showing, the burden of proof shifts to Respondent. The Panel finds the Complainant has met its burden. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Rights and legitimate interests can be found by meeting the requirements set in Policy ¶ 4(c). By not submitting a Response, Respondent has not demonstrated any of these interests, and therefore, the Panel may presume that Respondent does not have any rights or legitimate interests in the disputed domain name.
Nevertheless, the Panel examines all evidence in the record with regard to Policy ¶ 4(c) to see if the evidence suggests that Respondent has such rights. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
The WHOIS information states that the registrant of the <bolon-valves.com> domain name is “Bolon Valves Company.” Complainant, however, contends that not only is the name of the registrant fictitious, but it has investigated the address and failed to find an obvious business presence at that address. The phone number provided on the registration information does not connect to an active number. Complainant also asserts that it has never licensed or authorized Respondent to use the BALON mark. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”).
The panel in American International Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) found that respondent’s attempt to pass itself off as the complainant online was blatant unauthorized use of the complainant’s mark and was evidence that the respondent had no rights or legitimate interests in the disputed domain name. Here, the website that resolves from the disputed domain name imitates Complainant’s website in its entirety, only replacing the “a” in Complainant’s mark with an “o” where it appears on the website and changing the contact information. Respondent has copied the content of Complainant’s website, including designs and logos, and Complainant has referred to the offending website as a mirror of its own legitimate website. As in American International Group, the Panel here also finds that Respondent’s use of the website to pass itself off as Complainant online is evidence that Respondent lacks rights and legitimate interests in the <bolon-valves.com> domain name under Policy ¶ 4(a)(ii), and is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
By passing itself off as Complainant’s legitimate website, Respondent’s use of the <bolon-valves.com> domain name is capable of creating confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. And, Complainant contends that Respondent is likely commercially benefiting from the goodwill associated with the BALON mark. The Panel finds that such use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bolon-valves.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2008.
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