Swagelok Company v. HBT / NADER BAHRI
Claim Number: FA1304001495576
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA. Respondent is HBT / NADER BAHRI (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hbt-swagelok.com>, registered with Click Registrar, Inc. d/b/a publicdomainregistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2013; the National Arbitration Forum received payment on April 19, 2013.
On April 19, 2013, Click Registrar, Inc. d/b/a publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <hbt-swagelok.com> domain name is registered with Click Registrar, Inc. d/b/a publicdomainregistry.com and that Respondent is the current registrant of the name. Click Registrar, Inc. d/b/a publicdomainregistry.com has verified that Respondent is bound by the Click Registrar, Inc. d/b/a publicdomainregistry.com 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 April 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2013 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@hbt-swagelok.com. Also on April 22, 2013, 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 May 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
A. Complainant
a. Complainant, Swagelok Company, is the 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 including, but not limited to, the chemical and petrochemical, oil and gas, alternative fuels, biopharmaceutical, power and semiconductor industries.
b. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SWAGELOK mark (e.g., Reg. No. 595,412, registered April 20, 1951).
c. The domain name, <hbt-swagelok.com>, is identical or, at the very least, confusingly similar to Complainant’s SWAGELOK trademarks as Respondent merely combined Complainant’s trademark with its own company name, HBT, followed by a hyphen, along with the generic top-level domain (“gTLD”) of “.com.”
d. Respondent has no rights or legitimate interest in the SWAGELOK trademarks.
i. Respondent is not commonly known by the domain name, <hbt-swagelok.com>. Apparently Respondent is known as “HBT” or “HBT Nader Bahri.”
ii. According to its website at <hbt-swagelok.com> on November 19, 2012, Respondent sold Complainant’s goods as well as competing goods and services to the same consumers as Complainant. Since November 19, 2012, however, the website changed to merely reference the products Respondent sells.
e. Respondent’s disputed domain name was registered and is being used in bad faith.
i. Respondent’s use of the domain name <hbt-swagelok.com> has undoubtedly disrupted Complainant’s business and will continue to as well as cause confusion among Complainant’s customers as to the source, affiliation, or sponsorship of Respondent by Complainant where there is none.
ii. Respondent uses the SWAGELOK trademark with specialized font and color on its website.
iii. Respondent clearly was aware that the domain name <hbt-swagelok.com> contained Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Swagelok Company which list its address as Solon, OH, USA. Complainant is the owner of the mark SWAGELOK which it contends it has continuously used since 1948. SWAGELOK owns USA federal registrations for the mark as well as related domestic and international registrations for its family of SWAGELOK marks. Complainant is engaged in the development, manufacture and distribution of fluid system goods and services related to various common and alternative fuels. Complainant’s goods and services are offered through distributors located throughout the world as well as through its website located at <swagelok.com>.
Respondent is HBT/Nader Bahri whose address is listed as Tehran, Iran. Respondent’s registrar’s address is listed as Beaverton, OR, USA. Respondent registered the <hbt-swagelok.com> domain name on August 4, 2012.
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, Swagelok Company, claims that it is the 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 including, but not limited to, the chemical and petrochemical, oil and gas, alternative fuels, biopharmaceutical, power and semiconductor industries. Complainant asserts that it is the owner of trademark registrations with the USPTO for the SWAGELOK mark (e.g., Reg. No. 595,412, registered April 20, 1951). See Complainant’s Annex 4. The Panel notes that although Respondent appears to be located in Iran, the Respondent’s location is irrelevant since a Complainant is not required to register its mark in the country in which Respondent resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel finds that Complainant’s registration of the SWAGELOK mark with the USPTO demonstrates its rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant asserts that the domain name, <hbt-swagelok.com>, is identical or, at the very least, confusingly similar to Complainant’s SWAGELOK trademarks as Respondent merely combined Complainant’s trademark with its own company name, HBT, followed by a hyphen. The Panel finds that Respondent’s addition of a generic term does not eliminate confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). The Panel also finds that the addition of a hyphen does not differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Complainant argues that Respondent adds the gTLD “.com” to the disputed domain name. The Panel holds that the addition of a gTLD to a disputed domain name is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). The Panel finds that Respondent’s <hbt-swagelok.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element
The Panel recognizes 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), 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the domain name, <hbt-swagelok.com>. Complainant asserts that Respondent is known as “HBT” or “HBT Nader Bahri.” See Complainant’s Annex 2. Complainant claims that Respondent is not authorized or licensed to use Complainant’s trademarks. Complainant argues that there is absolutely no relationship, association, connection, or sponsorship between Complainant and Respondent. Complainant asserts that Respondent and Complainant are strictly direct competitors competing in the same marketplace. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that according to its website at <hbt-swagelok.com> on November 19, 2012, Respondent sold Complainant’s goods, as well as competing goods and services to the same consumers as Complainant. Complainant claims that since November 19, 2012, the website changed to merely reference the products Respondent sells. The Panel finds that Respondent’s use of the disputed domain name to sell competing products is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s use of the domain name <hbt-swagelok.com> has undoubtedly disrupted Complainant’s business and will continue to as well as cause confusion among Complainant’s customers as to the source, affiliation, or sponsorship of Respondent by Complainant where there is none. Complainant claims that according to its website at <hbt-swagelok.com> on November 19, 2012, Respondent sold Complainant’s goods as well as competing goods and services to the same consumers as Complainant. Complainant claims that since November 19, 2012, however, the website changed to merely reference the products Respondent sells. Complainant contends that Respondent is illegally using Complainant’s SWAGELOK trademarks to intentionally disrupt the business of Complainant and attract the would-be consumers of Complainant’s goods and services to its own website for commercial gain. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business according to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Complainant asserts that in the past, Respondent used the disputed domain name to sell competing goods and services. Complainant argues that Respondent presently references the products Respondent sells. The Panel finds that Respondent’s competing use of the disputed domain name evidences bad faith use and registration pursuant to Policy ¶ 4(b)(iv). Complainant argues that Respondent uses the SWAGELOK trademark with specialized font and color on its website. See Complainant’s Annex 3. The Panel further finds that Respondent’s attempt to pass itself off as Complainant also shows bad faith use and registration under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hbt-swagelok.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 3, 2013
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