Swagelok Company v. Jalali / Mahdieh Jalali
Claim Number: FA1304001497312
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA. Respondent is Jalali / Mahdieh Jalali (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelok-ir.com>, registered with PDR LTD. 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2013; the National Arbitration Forum received payment on April 30, 2013.
On May 2, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <swagelok-ir.com> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@swagelok-ir.com. Also on May 3, 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 31, 2013, 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.
1. Complainant’s business was founded in 1947 and is an industry leader in the development, manufacture and distribution of advanced and innovative fluid system products.
2. Complainant’s products are sold internationally.
3. Complainant owns rights in the SWAGELOK trademark under Policy ¶ 4(a)(i).
a. Complainant has used the SWAGELOK mark in commerce since at least 1948.
b. Complainant owns registrations for its SWAGELOK trademarks with the United States Patent and Trademark Office (“USPTO”).
i. Reg. No. 835,359 registered September 19, 1967.
ii. Reg. No. 843,543 registered February 6, 1968.
iii. Reg. No. 2,853,487 registered June 15, 2004.
iv. Reg. No. 3,487,160 registered August 19, 2008.
v. ISWAGELOK Reg. No. 3,873,982 registered November 9, 2010.
vi. SWAGELOK.COM Reg. No. 3,045,609 registered January 17, 2006.
c. Respondent registered the disputed domain name on October 11, 2008.
d. Complainant is not required to register its mark in the location where Respondent resides or operates.
4. Respondent’s <swagelok-ir.com> domain name is confusingly similar to Complainant’s SWAGELOK mark under Policy ¶ 4(a)(i).
a. Respondent adds a hyphen to Complainant’s SWAGELOK trademark with the country code for Iran, “IR”
b. Respondent ads the generic top-level domain “gTLD” “.com” to Complainant’s SWAGELOK trademark.
5. Respondent has no rights or legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the <swagelok-ir.com> domain name.
b. Respondent is not authorized or licensed to use Complainant’s trademarks.
c. Complainant is not associated with Respondent in any way.
d. Respondent is a direct competitor of Complainant.
e. Respondent is misappropriating Complainant’s trademarks in order to compete with Complainant.
f. Respondent’s website appears to feature Complainant’s products.
6. Respondent registered and uses the disputed domain name in bad faith.
a. Respondent has registered the <swagelok-ir.com> domain name in order to prevent Complainant from using it.
b. Respondent’s use of the disputed domain name disrupts Complainant’s business.
c. Respondent’s use of the disputed domain name causes confusion as to the source, affiliation, or sponsorship of Respondent by Complainant.
d. Respondent offers the same products and services as Complainant, which is in direct competition and within the same market.
e. Respondent uses the SWAGELOK trademark with specialized font and color, indicating Respondent’s knowledge of Complainant’s trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For 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 asserts rights in its SWAGELOK trademark under Policy ¶ 4(a)(i). Complainant claims it has used the SWAGELOK trademark since at least 1948. Complainant provides the Panel with evidence of its registrations with the USPTO including;
Reg. No. 835,359 registered September 19, 1967
Reg. No. 843,543 registered February 6, 1968
Reg. No. 2,853,487 registered June 15, 2004
Reg. No. 3,487,160 registered August 19, 2008
ISWAGELOK Reg. No. 3,873,982 registered November 9, 2010
SWAGELOK.COM Reg. No. 3,045,609 registered January 17, 2006.
Complainant claims it owns over 475 registrations for the SWAGELOK trademark in over ninety countries. Previous panels have found that evidence of registration with a recognized trademark authority will indicate rights in a mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Previous panels have found that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence. 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 has established rights in its SWAGELOK mark through its registrations with the USPTO under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <swagelok-ir.com> domain name is confusingly similar to Complainant’s SWAGELOK trademark under Policy ¶ 4(a)(i). Complainant claims that Respondent adds the country code for Iran, “IR” with the addition of a hyphen and the gTLD “.com.” Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a registered trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”) Based on Complainant’s contentions and prior UDRP case holdings, the Panel finds that Respondent’s <swagelok-ir.com> domain name is confusingly similar to Complainant’s SWAGELOK trademark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <swagelok-ir.com> domain name disputed domain name because is not commonly known by the <swagelok-ir.com> domain name under Policy ¶ 4(c)(ii). Complainant asserts that it has not authorized Respondent to use its trademarks in any way. Complainant also states that there is no relation, association or connection between Complainant and Respondent. The Panel also notes that the WHOIS information for Respondent lists “Jalali Magdieh Jalali” as Registrant of the disputed domain name. Previous panels have found a respondent is not commonly known by a disputed domain name when it has failed to submit evidence indicating that it was commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use. Complainant contends that Respondent is using the disputed domain name to sell goods and services that compete with Complainant. Complainant claims that Respondent’s resolving website features products that appear to be Complainant’s goods. The Panel notes that the website resolving from the <swagelok-ir.com> domain name features headings such as, “A Quick Look at the Fluid System,” “Components from Swagelok,” “Filters,” “Weld Fittings,” and “Pipe Crosses.” The Panel also notes that the resolving website states, “These products will improve your operating efficiency by eliminating leaks in all your systems. And, they are available from one source in IRAN, your Swagelok representative.” Complainant claims that this is a false statement and that Respondent is in direct competition with Complainant’s business. Complainant also claims that consumers can purchase goods and services off Respondent’s website resolving from the disputed domain name. Previous panels have found that this type of competition does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See 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). The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name under Policy ¶ 4(c)(i) or (iii).
Complainant has proven this element.
Complainant claims that Respondent has registered the <swagelok-ir.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by offering the same products and services as Complainant, thereby competing directly with Complainant’s business. The Panel notes that Respondent’s resolving website features images and descriptions of products that appear to be, or are very similar to complainant’s products. Previous panels have found bad faith under Policy ¶ 4(b)(iii) when a respondent appropriates a complainant’s mark to divert a complainant’s customers to a respondent’s competing business. See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). The Panel finds that Respondent registered and is using the <swagelok-ir.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). Complainant contends that Respondent is causing confusion as to the source, affiliation, or sponsorship of Respondent by Complainant. Complainant further states that Complainant’s potential consumers will be diverted to Respondent’s website and become confused as to the relationship between Respondent and Complainant, where Complainant asserts there is none. Complainant claims that Respondent is commercially gaining by attracting Complainant’s potential consumers to Respondent’s website resolving from the <swagelok-ir.com> domain name and diverting them away from Complainant’s legitimate business. Previous panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent uses a confusingly similar domain name to offer goods that compete with a complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). Therefore the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the SWAGELOK trademark. Complainant argues that Respondent's use of a specialized font and color for the SWAGELOK trademark indicates that Respondent had actual knowledge of Complainant’s rights in the trademark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
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 <swagelok-ir.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 6, 2013
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