national arbitration forum

 

DECISION

 

Swagelok Company v. Elite Sales, Inc.

Claim Number: FA1112001421137

 

PARTIES

Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA.  Respondent is Elite Sales, Inc. (“Respondent”), represented by Marc Randazza of Randazza Legal Group, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <swagelocks.com>, registered with GoDaddy.com, LLC.

 

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.

 

Roberto A. Bianchi as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.

 

On December 22, 2011, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <swagelocks.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 January 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2012 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@swagelocks.com.  Also on January 3, 2012, 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 February 6, 2012.

 

On February 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.

 

On February 10, 2012, the Forum received an additional submission by Complainant. This submission was timely.  Respondent did not reply to Complainant's additional submission.

 

On February 13, 2012, Complainant gave notice to The Forum, with copy to the Respondent, that it had initiated a legal proceeding against Respondent concerning the disputed domain name in the U.S. District Court for the Southern District of Florida, Case No. 1:12-cv-20463-PAS.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

In its Complaint, Complainant contends as follows:

 

-         The disputed domain name is identical and, at the very least, confusingly similar to Complainant's SWAGELOK trademarks. The disputed domain name merely adds an “s” at the end of “swagelocks” and inserts a “c” for the full name “swagelocks”.

 

-         There is no evidence that before any notice to Respondent of the dispute the disputed domain name was used in connection with any fair use or legitimate interest.  Rather, Respondent uses the disputed domain name to automatically redirect existing and prospective customers of Complainant to Respondent's website <swagelocks.com>. Respondent offers a variety of steel aluminum and copper sleeves which it calls “swagelocks”.  Complainant offers similar goods under the SWAGELOK trademarks and online to its consumers through its SWAGELOK service mark.

 

-         Respondent has never been commonly known by the SWAGELOK trademarks or service mark, or has ever had any right to use such marks. Respondent's use of the disputed domain name dilutes and tarnishes the SWAGELOK marks.

 

-         Respondent is not making any non-commercial or other fair use of the disputed domain name. Rather, Respondent is misleading current and prospective consumers of Complainant, seeking genuine goods and services of Complainant, to Respondent’s website at <swagelocks.com>.  Respondent, by using the disputed domain name, is automatically redirecting Internet users who are otherwise searching for the goods and services of Complainant. Respondent is intentionally misleading consumers on the Internet as to the source, sponsorship and approval of its goods and services by Complainant.

 

B. Respondent

            In its Response, Respondent contends the following:

 

-         Swaging is a very old and well-known process used for more than two hundred years to shape metal without the need for heating the metal to soften it.  The process of swaging metal for industrial purposes is widespread – particularly in Respondent’s field of wire rope and cabling. For example, swaging presses are regularly used to lock metal collars around wire rope and cabling. Respondent’s products known as “SwageLocks” are such metal collars used to create loops or “eyes” in a piece of wire rope or cabling. Swaging a “lock” onto the looped wire rope or cable makes it ready for use in lifting, towing, winching, or numerous other industrial applications. The SwageLock product fits directly into Respondent’s line of commercial offerings, which are all aimed at the wire rope and cable-using segment of the industrial market.

 

-         The goods sold by Complainant and Respondent cannot be used together, are not used for the same purpose, and are not purchased by the same consumers. Respondent’s goods are wholly useless in the types of machines and applications for which Complainant’s goods are utilized, and the converse of this fact is true as well.

 

-         Respondent’s products are “Swage Locks,” and Respondent should not be required to invent a new word, or to use a misleading term, to describe its own products.

 

-         Respondent concedes that Complainant has some rights in the term “Swagelok”, as evidenced by Complainant’s US trademark registration certificates, but disputes the extension of those rights beyond Complainant’s field of products as indicated on these certificates. Trademark rights are not “in gross” rights. They are limited to specific goods and services. Moreover, Respondent disputes that Complainant’s rights may validly be used to prevent the use of the words “swage” and “lock” to describe a lock that is swaged onto looped wire rope or cable – especially where that use is wholly unrelated to Complainant’s mark or commercial presence.

 

-         Respondent asserts that the Complainant’s mark is not identical to the disputed domain name. Although addition of the “.com” TLD may not suffice to disprove their nature as “identical”, a visual comparison of Complainant’s mark and the disputed domain name reveals that the disputed domain name includes the letter “c” where Complainant’s mark does not, as well as an “s” just before the TLD. Respondent concedes, however, that Complainant’s mark and the disputed domain name are visually similar, in that they only differ by two letters. That is not to say that the disputed domain name is confusingly similar to Complainant’s mark.  Complainant has not provided any evidence that consumers associate the terms “swage” and “lock” exclusively with Complainant, or that their use by Respondent would cause confusion.

 

-         For months before receiving notice of the Complaint, Respondent had been using the disputed domain name to market, promote, advertise and sell its “SwageLock” products. Respondent’s customers recognize that it has chosen “SwageLock” (Respondent’s mark) as a trademark for the line of carbon steel and zinc plated sleeves designed for use with wire rope and cabling in the industrial rigging equipment market. Through Respondent’s use of Respondent’s mark in the field of industrial rigging equipment, among others, Respondent’s mark has become a source identifier – albeit a weak and descriptive one – for the carbon steel and zinc plated sleeves sold by Respondent to users of industrial rigging equipment.

 

-         When Respondent received Complainant’s letter of October 6, 2011, that was the first day on which the Respondent became aware of Complainant and Complainant’s mark. The date stamp appearing in the footer of each screen capture attached to Complainant’s letter shows that Respondent had been making a bona fide use of both Respondent’s mark and the disputed domain name since as early as September 14, 2011. The publicly available WHOIS record for the disputed domain name shows that the disputed domain name was first registered several days before that, on September 6th.

 

-         Complainant has not provided evidence that Respondent’s registration of the disputed domain name is abusive. Although the Complaint recites that Respondent is a “cyber-squatter,” the assertion is made with no support. Respondent did not register the domain name for any purpose except to market its “SwageLocks.” Respondent did not try to sell the domain name, does not compete with Complainant, nor does Respondent engage in any other form of behavior that could be considered to be “bad faith” under the Policy.

 

C. Additional Submission of Complainant

In its Additional Submission, Complainant, besides reiterating many of the contentions made in the Complaint, makes the following new contentions:

 

-         Respondent's sleeves are used to connect wire rope together. For all intents and purposes, Complainant and Respondent are competitors within the same marketplace, channels of trade and industries for the same goods and services.

 

-         Complainant has the exclusive right to use the SWAGELOK marks pursuant to the Lanham Act. Respondent admits this much, but then tries to erroneously limit this exclusivity to only those products identified in the registrations. Complainant denies that the goods are dissimilar. The registrations of the SWAGELOK marks cover the collars and sleeves sold by Respondent. The patented SWAGELOK tube fitting is used to join two pieces of metal tubing, and Respondent’s Swagelock collars and sleeves are used to join two pieces of metal rope or wire together of crate loops or eyes in wire rope or cable. Respondent ignores the fact that the two products are sold within the same industries including, but not limited to, oil and gas.  Further, the rights of the owner of a registered trademark are not limited to protection with respect to the specific goods stated on the certificate but extend to any goods related in the minds of consumers in the sense that a single producer is likely to put out both goods.

 

-         Respondent seemingly contends that it has a legitimate interest in the disputed domain name because the terms “swage” and “lock” are allegedly commonly used in its business, and that it is just using the terms in the descriptive sense. However, the term Respondent is using is “Swagelock(s)” and not “swage” and “lock” separately. Respondent`s own websites at <swagelocks.com> and <elitesalesinc.com> clearly indicate that Respondent is using the term “Swagelock” (together) as a mark and not to describe its sleeves or collars.

 

-         Complainant has used the SWAGELOK trademarks since at least 1948, and it has hundreds of trademark registrations globally in over 90 countries. Respondent must have had knowledge of the SWAGELOK trademarks prior to its adoption and registration of the disputed domain name in light of the omnipresent and prolific nature of the SWAGELOK trademarks within the industries that Respondent does business.

 

 

FINDINGS

Complainant uses the SWAGELOK mark since at least 1948. It owns numerous US trademark registrations for SWAGELOK covering diverse metal products and online services.

 

On September 6, 2011, Respondent registered the disputed domain name.

 

On October 6, 2011, Complainant sent Respondent a cease and desist letter concerning the disputed domain name.

 

DISCUSSION

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.

 

Procedural Issue One: Complainant's Additional Submission.

 

In principle, the Panel is ready to accept an un-requested additional filing from a complainant when it deals with arguments or evidence of the response that reasonably could not have been anticipated. See Acumen Enterps., Inc. v. Morgan, FA 1381503 (Nat. Arb. Forum May 17, 2011) (“The Panel decided not to consider Complainant’s Additional Submission of May 2, 2011 because it does not deal with any argument of Respondent which could not have been anticipated by Complainant”); see also Am. Airlines, Inc. v. Proxied Domains, FA 1248138 (Nat. Arb. Forum Apr. 8, 2009) (deciding not to consider an additional submission not containing any new information or arguments that could not have been anticipated); see also Vaga-lume Midia Ltda v. Ouz, FA 1287151 (Nat. Arb. Forum Dec. 7, 2009) (deciding to admit and consider the complainant’s additional submission with evidence unavailable at the time the complaint was submitted).

 

In the present case, the Panel believes that the new contentions made by Complainant in its Additional Submission address issues raised in the Response that could not have been anticipated by Complainant. In particular, the Panel notes that Respondent failed to reply to Complainant's cease and desist letter of October 6, 2011, and merely stated that it had conveyed the matter to its counsel. Thus, Complainant had no reason to anticipate that Respondent in its Response would defend its registration of the disputed domain by relying name in its Response on an allegedly descriptive nature of the combined term “swagelock”, especially considering that Complainant's had been using its own SWAGELOK marks since 1948. Given that the new contentions of Complainant’s Additional Submission are a reply to this point, the Panel decides to admit and consider these contentions.

 

Procedural Issue Two:  Effect of Pending Judicial Action on this Proceeding.

 

In compliance with Rules ¶ 18(b), Complainant timely notified that on February 13, 2012, it brought a civil action against Respondent before a Florida District Court. See “Procedural History”, in fine. In this action, Complainant is suing Elite Sales for trademark infringement, federal unfair competition and false designation of origin, violation of the ACPA, unfair and deceptive trade practices in violation of the Florida Deceptive and Unfair Trade Practices Act, and trademark infringement and unfair competition in violation of Florida common law arising out of Elite Sales` infringement on Swagelok`s registered trademarks and service marks SWAGELOK and SWAGELOK.COM, in using the identical or confusingly similar mark SWAGELOCK in connection with certain metal goods, and registering the domain name swagelocks.com.  In this civil action Complainant seeks a preliminary and permanent injunction, compensatory damages and other damages, and attorney’s fees.  Complainant also seeks an order by the Florida District Court instructing Elite Sales to immediately transfer the domain name swagelocks.com to Swagelok. 

 

Respondent has not submitted any comment on the effect of this civil action on the present proceeding.

 

According to Rules ¶ 18(a), “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” Since there is no contradiction between the remedy sought in the present proceeding – transfer of the disputed domain name to Complainant – and the order of transfer sought in the civil action, the Panel sees no reason to suspend or terminate the proceeding, and, in exercise of its discretion, decides to proceed to a decision. 

 

Identical and/or Confusingly Similar

 

Complainant has evidenced that it has been using the SWAGELOK mark since at least 1948 and that it owns numerous trademark registrations for the U.S. SWAGELOK mark, covering very diverse metal products and online services related to numerous industrial fields.  Accordingly, the Panel finds that Complainant has trademark rights in the SWAGELOK mark

 

The disputed domain name differs from Complainant's mark only in that in the domain name a “c” is included before the “k”, and a final “s” is added before the gTLD “com”.  These differences are irrelevant, inapt to distinguish the disputed domain name from Complainant's mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark).

 

The Panel concludes that the disputed domain name is confusingly similar to Complainant's SWAGELOK marks.

 

Rights or Legitimate Interests

 

Complainant contends that there is no evidence that before any notice to Respondent of the dispute the disputed domain name was used in connection with any fair use or legitimate interest.  Rather, adds Complainant, Respondent uses the disputed domain name to automatically redirect existing and prospective customers of Complainant to Respondent's website <swagelocks.com>, offering a variety of steel aluminum and copper sleeves called “swagelocks” by Respondent.  Complainant contends that it offers similar goods under the SWAGELOK trademarks and online to its consumers through its SWAGELOK service mark. Complainant also contends that Respondent has never been commonly known by the SWAGELOK trademarks or service mark, that it never had any right to use such marks, and that Respondent's use of the disputed domain name dilutes and tarnishes the SWAGELOK marks.  Finally, contends Complainant, Respondent is not making any non-commercial or other fair use of the disputed domain name, but is misleading current and prospective consumers of Complainant, seeking genuine goods and services of Complainant, to Respondent’s website at <swagelocks.com>

 

Respondent replies that it offers a variety of steel aluminum and copper sleeves which it calls “swagelocks”, and that this term is used descriptively of such products. (“Respondent’s products known as ‘SwageLocks’ are such metal collars used to create loops or ‘eyes’ in a piece of wire rope or cabling.” Response). However, Respondent also states, “Respondent’s customers recognize that [Respondent] has chosen ‘SwageLock’ (Respondent’s mark) as a trademark for the line of carbon steel and zinc plated sleeves designed for use with wire rope and cabling in the industrial rigging equipment market.” The Panel agrees with Complainant that Respondent’s argument is somewhat contradictory. On the one hand Respondent maintains that “swagelock” is descriptive of certain goods. On the other hand, it says that its customers recognize the term as a trademark for such or similar goods.

 

In fact, Complainant has evidenced that it owns several US valid registrations for the SWAGELOK mark, which means that this expression is not descriptive and that it confers Complainant exclusive rights in this composite term. 

 

Also, given that Complainant has been using the SWAGELOK mark since 1948 in industries and for products presumably familiar in Respondent's field of business, Respondent's registration of the disputed domain name, and subsequent use of the “swagelocks” expression, does not constitute a bona fide use of the domain name. Respondent does not prove that Complainant's mark or its own “swagelocks” term is descriptive of any goods. The Panel accepts that “swage” and “swaging” may be “dictionary words” or that they (isolated) might be descriptive in respect of certain objects or actions, and the same seems to apply to “lock”. However Respondent did not present the Panel with any evidence showing that the composite term “swagelok” (or “swagelock” or “swagelocks”) is descriptive of any object or action. 

 

On its website at the disputed domain name Respondent is using the term “swagelock” or “swagelocks” as a mark for products competing with Complainant, instead of offering genuine products of Complainant (whether authorized or not by Complainant). Thus, Respondent cannot claim that it is making a “bona fideor a legitimate noncommercial or fair use of a disputed domain nameSee Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”)

 

The Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

Since Complainant has been using the SWAGELOK mark since at least 1948, and owns numerous valid US trademark registrations for this mark, it is more likely than not that Respondent, also with domicile in the United States of America, knew of Complainant, and of its SWAGELOK products and marks when it registered the disputed domain name. 

 

As seen above, Respondent is not using the term “swagelocks” in the disputed domain name descriptively but as a mark not covering genuine metal products of Complainant, but other products, in competition with Complainant. Thus, by using the domain name, Respondent has intentionally attempted, through the sale of competing goods, to disrupt Complainant's business. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. 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).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website)

 

Also, by using the disputed domain name as shown above, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. According to Policy 4(b)(iv) this is further a circumstance of registration and use in bad faith of the domain name.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <swagelocks.com> domain name be TRANSFERRED from Respondent to Complainant

 

 

Roberto A. Bianchi, Panelist

Dated:  February 23, 2012

 

 

 

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