national arbitration forum

 

DECISION

 

American Petroleum Institute v. Tom Hinklin

Claim Number: FA1009001346832

 

PARTIES

Complainant is American Petroleum Institute ("Complainant"), represented by B. Brett M. Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA.  Respondent is Tom Hinklin ("Respondent"), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are the following: <apI650.com>, <api1104.com>, and <apistandards.com>, registered with 1 & 1 Internet Ag.

 

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2010; the National Arbitration Forum received payment on September 16, 2010.

 

On September 23, 2010, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <apI650.com>, <api1104.com>, and <apistandards.com> domain names are registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the names.  1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 2010 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@apI650.com, postmaster@api1104.com, and postmaster@apistandards.com.  Also on September 24, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 compliant response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any compliant response from Respondent.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to      

Complainant.

 

PARTIES' CONTENTIONS 

A. Complainant makes the following assertions:

 

Complainant uses its API mark in connection with the promotion, development, and improvement of the petroleum and natural gas industry. 

 

Complainant maintains a Standards Program that has developed standards, specifications, and recommended practices to assist businesses in the use of safe, interchangeable parts, the production of quality products, and the adoption of safe operations practices in the petroleum and natural gas industry. 

 

Complainant currently maintains over 500 different petroleum industry standards, including API 1104 for “Welding of Pipelines and Related Facilities,” and API 650 for “Welded Tanks for Oil Storage.” 

 

Complainant owns trademark registrations with the United States Patent and Trademark Office for its API mark (including Reg. No. 679,642, issued June 2, 1959).

 

Respondent registered the <api1104.com> and <apistandards.com> domain names on December 10, 2005. 

 

Respondent registered the <apI650.com> domain name on June 21, 2007. 

 

The disputed domain names resolve to commercial websites featuring pay-per-click advertisements for websites that directly compete with the business of Complainant. 

 

Respondent’s <apI650.com>, <api1104.com>, and <apistandards.com> domain names are confusingly similar to Complainant’s API mark.

 

Respondent does not have any rights to or legitimate interests in the <apI650.com>,    <api1104.com> and <apistandards.com> domain names.

 

Respondent registered and uses the domain names <apI650.com>, <api1104.com>, and <apistandards.com> in bad faith.

 

B.  Respondent failed to submit a compliant Response in this proceeding.  However, in an e-mail communication addressed to the National Arbitration Forum and to Complainant under date of September 28, 2010, Respondent recited as follows: 

 

“I am willing to comply with your request to have the domains transferred to you [Complainant].… I am not contesting this complaint.”

 

DISCUSSION

 

Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions (see Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004;  see also Disney Enterprises, Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005)). 

 

DECISION

Respondent’s Response does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain names be transferred to Complainant.  Rather Respondent has expressed its written consent to such transfer.  Thus the parties have effectively agreed in writing to a transfer of the subject domain names from Respondent to Complainant without the need for further proceedings.

 

It is therefore Ordered that the domain names <apI650.com>, <api1104.com>, and <apistandards.com> be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  November 9, 2010

 

 

 

 

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