Norgren, Inc. v. Air Force P&H
Claim Number: FA1208001457931
Complainant is Norgren, Inc. (“Complainant”), represented by Jennifer D. Collins of The Ollila Law Group LLC, Colorado, USA. Respondent is Air Force P&H (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <norgrenvalves.com>, registered with Register.it SPA.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2012; the National Arbitration Forum received payment on August 14, 2012.
On August 16, 2012, Register.it SPA confirmed by e-mail to the National Arbitration Forum that the <norgrenvalves.com> domain name is registered with Register.it SPA and that Respondent is the current registrant of the name. Register.it SPA has verified that Respondent is bound by the Register.it SPA 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 August 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@norgrenvalves.com. Also on August 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
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 response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
I. Complainant alleges:
a. Complainant owns rights in the NORGREN mark.
i. Complainant uses the NORGREN mark in connection with motion and fluid control products.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 950,639 registered January 16, 1973) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 982,708 registered November 5, 1971).
b. Respondent’s <norgrenvalves.com> domain name is confusingly similar to Complainant’s NORGREN mark.
i. The term “valves” is descriptive of Complainant’s business.
ii. The additions of the descriptive term and the generic top-level domain (“gTLD”) “.com” do not remove the disputed domain name from the realm of confusing similarity.
c. Respondent is not commonly known by the <norgrenvalves.com> domain name.
i. There is no evidence that Respondent operates a business or an organization under the disputed domain name.
ii. The WHOIS information identifies the registrant of the disputed domain name as “Air Force P&H.”
iii. Respondent is not related to Complainant and is not entitled to use Complainant’s mark.
d. Respondent is not using the <norgrenvalves.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent uses the <norgrenvalves.com> domain name to resolve to a website that offers pneumatic and hydraulic product of Complainant and Complainant’s competitors.
e. Respondent’s registration and use of the <norgrenvalves.com> domain name disrupts Complainant’s business.
i. The <norgrenvalves.com> domain name resolves to a website where Complainant’s products and the products of Complainant’s competitors are sold.
f. Respondent registered and uses the <norgrenvalves.com> domain name for the purpose of commercially benefiting from Internet user confusion as to Complainant’s affiliation with the domain name.
i. Respondent benefits financially from the sale of products on the resolving website.
ii. Internet users seeking information online will likely be misled to Respondent’s website.
II. Respondent did not submit a Response.
For the reasons set forth below, the panel finds Complainant is entitled to the relief requested.
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(e), 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 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.”).
Complainant claims that it owns rights in the NORGREN mark, which Complainant alleges it uses in connection with motion and fluid control products. Complainant argues that it owns trademark registrations with USPTO (e.g., Reg. No. 950,639 registered January 16, 1973) and with UKIPO (e.g., Reg. No. 982,708 registered November 5, 1971). These trademark registrations sufficiently establish Complainant’s rights in NORGREN mark pursuant to Policy ¶ 4(a)(i). See DatingDirect.com Limited v. Turner, FA 349013 (Nat. Arb. Forum Dec. 16, 2004) (finding that the panel recognizes the distinctive nature of the complainant’s DATINGDIRECT.COM mark through registration with the United Kingdom Patent Office); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <norgrenvalves.com> domain name is confusingly similar to Complainant’s NORGREN mark. Complainant argues that Respondent adds the term “valves” to Complainant’s mark and that the term “valves” is descriptive of Complainant’s business. Complainant further claims that the additions of the descriptive term and the gTLD “.com” do not remove the disputed domain name from the realm of confusing similarity. The Panel agrees and hold that Respondent’s <norgrenvalves.com> domain name is confusingly similar to Complainant’s NORGREN mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the <norgrenvalves.com> domain name. Complainant alleges that there is no evidence that Respondent operates a business or an organization under the disputed domain name. Complainant provides the WHOIS information, which identifies the registrant of the disputed domain name as “Air Force P&H,” and argues that the WHOIS information does not indicate that Respondent is commonly known by the domain name. Complainant argues that Respondent is not related to Complainant and is not entitled to use Complainant’s mark. In light of this evidence and the lack of a Response, the Panel determines that Respondent is not commonly known by the <norgrenvalves.com> domain name according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
According to Complainant, Respondent is not using the <norgrenvalves.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent uses the <norgrenvalves.com> domain name to resolve to a website that offers pneumatic and hydraulic products of Complainant and Complainant’s competitors. Complainant argues that this is not a nominative fair use because Respondent sells Complainant’s competitor’s products and does not disclose Respondent’s relationship with Complainant on the resolving website. The Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <norgrenvalves.com> domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant has proven this element.
Complainant alleges that Respondent’s registration and use of the <norgrenvalves.com> domain name disrupts Complainant’s business. Complainant claims that the <norgrenvalves.com> domain name resolves to a website where Complainant’s products and the products of Complainant’s competitors are sold. The Panel concludes that Respondent is disrupting Complainant’s business and the Panel holds that Respondent registered and uses the <norgrenvalves.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant argues that Respondent registered and uses the <norgrenvalves.com> domain name for the purpose of commercially benefiting from Internet user confusion as to Complainant’s affiliation with the domain name. Complainant asserts that Respondent benefits financially from the sale of products on the resolving website. Complainant further contends that Internet users seeking information online will likely be misled to Respondent’s website. The Panel finds that Respondent is attempting to create, and profit from, Internet user confusion and determines that Respondent registered and uses the <norgrenvalves.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <norgrenvalves.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: September 21, 2012
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