Swagelok Company v. Ron Feliciano
Claim Number: FA1305001500688
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA. Respondent is Ron Feliciano (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelok5.info>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 21, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <swagelok5.info> 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 May 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@swagelok5.info. Also on May 21, 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 June 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <swagelok5.info> domain name, the domain name at issue, is confusingly similar to Complainant’s SWAGELOK mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the SWAGELOK mark in the development and manufacturing of fluid system products and services, including those made for chemical and petrochemical fluids (among many others). Complainant has used the mark since early October 1948 and has established and secured its rights in the SWAGELOCK mark by registration with various national trademark agencies. See United States Patent & Trademark Office (“USPTO”) Reg. No. 595,412 registered on Sept. 21, 1954; USPTO Reg. No. 2,853,487 registered on June 15, 2004; Philippines Intellectual Property Office (“PIPO”) Reg. No. 35,803 registered on Aug. 13, 1986. Respondent has registered the <swagelok5.info> domain name, which merely adds the number “5” and the generic top-level domain (“gTLD”) “.com” to the SWAGELOK mark.
Complainant has absolutely no relationship, association, connection, sponsorship agreement, or distributorship contract with Respondent. Respondent is appropriating the SWAGELOK mark in its use of the <swagelok5.info> domain name to run a business that competes with Complainant. Respondent promotes some of these goods as being official SWAGELOK products despite having no authorization or license to sell Complainant’s goods. Respondent also uses this domain name to sell goods made by Complainant’s biggest competitors—Parker, Tylok, and Legris. Respondent’s business on the website associated with the <swagelok5.info> domain name is illegitimate and without a bona fide purpose. Respondent also provides unrelated hyperlinks to various third-party websites. These uses do not create a bona fide offering. Respondent’s continued use of the <swagelok5.info> domain name is bound to disrupt Complainant’s business. Internet users will make purchases through this website that should have gone to Complainant. Respondent seeks to take advantage of unsuspecting consumers who may erroneously visit this website and associate the content therein with Complainant and its SWAGELOK mark. Respondent then offers a variety of competing and illegitimately obtained goods to these confused Internet users. Respondent is receiving profit through the confusion. Respondent clearly knows it is infringing on the SWAGELOK mark. Respondent is after all offering SWAGELOK goods explicitly on the domain name’s website store.
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 is using the SWAGELOK mark in the development and manufacture of fluid system products and services and has established and secured its rights in the SWAGELOCK mark by registering the mark with various national trademark agencies. See USPTO Reg. No. 595,412 registered on Sept. 21, 1954; USPTO Reg. No. 2,853,487 registered on June 15, 2004; PIPO Reg. No. 35,803 registered on Aug. 13, 1986. Registration of the SWAGELOK mark in both Respondent’s listed location in the Philippines, as well as through the USPTO, verifies that Complainant has Policy ¶ 4(a)(i) rights in the mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent has registered the <swagelok5.info> domain name, which merely adds the number “5” and the gTLD “.com” to the SWAGELOK mark, and the domain name is confusingly similar to Complainant’s mark. Neither the addition of a gTLD, nor a random number, can differentiate a domain name from a registered mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Accordingly, Respondent’s <swagelok5.info> domain name is confusingly similar to Complainant’s SWAGELOK mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known as the <swagelok5.info> domain name. Complainant declares that it has absolutely no relationship, association, connection, sponsorship agreement, or distributorship contract with Respondent. The WHOIS information lists Respondent as being one “Ron Feliciano.” The record provides no reason to find that Respondent is commonly known by the <swagelok5.info> domain name under 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).
Respondent is appropriating the SWAGELOK mark in its use of the <swagelok5.info> domain name to run a business that competes with Complainant. Respondent promotes some of these goods as being official SWAGELOK products, despite having no authorization or license to sell Complainant’s goods. Respondent also uses this domain name to sell the goods made by Complainant’s biggest competitors—Parker, Tylok, and Legris. Accordingly, Respondent’s business on the <swagelok5.info> website is illegitimate and without a bona fide purpose. The record illustrates that the domain name resolves to a website that lists an array of different products, some bearing the SWAGELOK mark while others are sold under competing brand names, but all of these products relate to the kind of products sold in Complainant’s business. Using the SWAGELOK mark in a domain name for offering Complainant’s own goods, along with competing goods, through Respondent’s independent and competing business is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. 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).
Respondent also provides unrelated hyperlinks to various third-party websites. These uses do not create a bona fide offering. In addition to the competing business uses, the disputed domain name also includes a directory of hyperlinks to random websites. Hosting unrelated hyperlinks cannot serve as an alternative basis for finding a Policy ¶ 4(c)(i) bona fide offering, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent’s continued use of the <swagelok5.info> domain name is bound to disrupt Complainant’s business. Internet users will make purchases through this website, handing over money to Respondent that should have gone to Complainant. Complainant’s own goods are being boldly promoted on the website associated with the disputed domain name, along with those of Complainant’s largest competitors. The offering of Complainant’s own goods, in connection with offers of competing goods, is evidence that Respondent is seeking to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii). See 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).
Respondent seeks to take advantage of unsuspecting consumers who may erroneously visit this website and associate the content therein with Complainant and its SWAGELOK mark. Respondent there offers a variety of competing goods and illegitimate SWAGELOK goods to these confused Internet users. Respondent profits through the confusion. Use of the SWAGELOK mark in offering unauthorized and competing goods is evidence of Respondent’s Policy ¶ 4(b)(iv) bad faith confusion of Internet users. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
Respondent clearly knows it is infringing on the SWAGELOK mark. Respondent is after all offering SWAGELOK goods explicitly on the domain name’s website store. The Panel finds that Respondent's had actual knowledge of Complainant’s rights and that Respondent registered the <swagelok5.info> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swagelok5.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 24, 2013
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