Swagelok Company v. ICS INC.
Claim Number: FA1307001510312
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iswagelok.net>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2013; the National Arbitration Forum received payment on July 18, 2013.
On July 19, 2013, PDR LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <iswagelok.net> 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 July 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@iswagelok.net. Also on July 23, 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 August 19, 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 <iswagelok.net> 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 has continuously used the SWAGELOK trademark worldwide since at least as early as October 1948 and owns over 475 registrations for the SWAGELOK trademark over 90 countries including the United States. For example, Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 595,412 registered September 21, 1954, Reg. No. 835,359 registered September 19, 1967 and Reg. No. 843,543 registered February 6, 1968. Complainant’s SWAGELOK mark is famous.
Respondent’s <iswagelok.net> domain name is confusingly similar to Complainant’s SWAGELOK trademark. Respondent merely adds the generic top level domain (“gTLD”) “.net.” Respondent is not commonly known by the disputed domain name and is not authorized or licensed by Complainant to use its SWAGELOK trademarks. Respondent is misappropriating Complainant’s trademarks by displaying Complainant’s products on Respondent’s resolving website and is intending to attract Internet users to its website for financial profit. Respondent’s continued use of the disputed domain name will disrupt Complainant’s business and cause confusion about Complainant’s affiliation with Respondent. Respondent’s use of the disputed domain name intentionally attracts Internet users to its own website through the use of Complainant’s trademark. Respondent had actual knowledge of Complainant’s trademark when it registered the disputed domain name. Respondent registered the <iswagelok.net> domain name on June 2, 2013.
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 an industry leader in the development, manufacture and distribution of advanced and innovative fluid system products, services and solutions with a wide range of global industries. This includes chemical and petrochemical, oil and gas, alternative fuels, biopharmaceuticals, power and semiconductors. Complainant has used its SWAGELOK trademark since as early as October 1948 and has provided evidence of its registrations for its SWAGELOK mark with the USPTO including:
Reg. No. 595,412 registered September 21, 1954
Reg. No. 835,359 registered September 19, 1967
Reg. No. 843,543 registered February 6, 1968
In all, Complainant owns 475 registrations for its SWAGELOK trademark over 90 countries around the world. Evidence of a registration with a recognized authority is sufficient to establish rights in a given mark. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)). It is irrelevant whether a complainant registers its mark in the country where respondent is located, only that complainant’s mark is registered with a recognized authority. 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).
Respondent’s <iswagelok.net> domain name is confusingly similar to Complainant’s SWAGELOK trademark under Policy ¶ 4(a)(i). Respondent merely adds the gTLD “.net” to Complainant’s SWAGELOK trademark. Respondent also adds the letter “I” to in front of Complainant’s SWAGELOK trademark. Variations such as adding a gTLD or adding additional letters are insufficient to differentiate a disputed domain name from a given mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also 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). Respondent’s <iswagelok.net> domain name is confusingly similar to Complainant’s SWAGELOK mark under 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 by the <iswagelok.net> domain name and Complainant has not authorized or licensed Respondent to use its trademark in any way. The WHOIS information for Respondent’s disputed domain name lists ICS INC. as registrant. Previous panels have found that a respondent was not commonly known by a disputed domain name where the WHOIS information, as well as other information presented in the record, gave no indication that the respondent was commonly known by the disputed domain name, and the complainant had not authorized the respondent to register a domain name containing its registered mark. 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. Accordingly, Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent’s <iswagelok.net> domain name resolves to a website being used as a parked page to generate click through advertising revenue. Respondent’s resolving website features links to companies that are unrelated to Complainant’s goods or services. Respondent is attempting to use these advertisements to attract Internet users by using Complainant’s trademark. The Panel notes that Respondent’s website features links such as, “Tire Rack- Official Site,” “Free Dental Implants,” “Keiser University Online,” “Scanadu Scout,” “Dual Diagnosis Center,” and “Star Health.” Previous panels have found that using a confusingly similar domain name to redirect Internet users to a website featuring links and advertisements unrelated to a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel finds that Respondent has no rights or legitimate interest in the disputed domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is using Complainant’s trademark to intentionally disrupt Complainant’s business and to attract potential consumers of Complainant’s goods and services for its own gain. The website resolving from Respondent’s disputed domain name causes confusion as to the source, sponsorship, association, approval, connection or relationship between Respondent and Complainant. Respondent is attracting Internet users to its disputed website for commercial gain. Previous panels have found that this type of use works to disrupt a complainant’s business and attracts potential consumers to a respondent’s website by using a complainant’s trademark and thus commercially profiting. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel finds that respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent must have had constructive and/or actual notice of Complainant's rights in the SWAGELOK trademark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
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 <iswagelok.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 22, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page