Swagelok Company v. Tao Tang
Claim Number: FA1309001520326
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour, Gavin, Gerlack & Manos Co., L.P.A., Ohio, USA. Respondent is Tao Tang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelockchina.com>, registered with HiChina Zhicheng Technology Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2013; the National Arbitration Forum received payment on September 19, 2013. The Complaint was received in both Chinese and English.
On September 21, 2013, HiChina Zhicheng Technology Limited confirmed by e-mail to the National Arbitration Forum that the <swagelockchina.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 September 23, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 15, 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@swagelockchina.com. Also on September 23, 2013, the Chinese language 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 October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
1. Complainant sells various fluid system products in connection with the SWAGELOK mark, such as chemical and petrochemical products, oil and gas, alternative fuels, biopharmaceutical products, and power and semiconductor products.
2. Complainant also provides various services including, logistics business support management, inventory control, equipment rental, procurement, shipping and delivery services, mental treatment, education and training, welding training, assembly, and scientific and technological testing.
3. Complainant’s products and services are available at Complainant’s websites at the <swagelok.com>, <swagelok.com.cn>, and <swagelok.com.cn/shanghai> domain names.
4. Complainant has used the SWAGELOK trademark in commerce since at least as early as October 1948.
5. Complainant has had sales offices located in China since as early as 1985.
6. Complainant has rights in its SWAGELOK trademarks through its registrations with the United States Patent and Trademark Office (“USPTO”) as well as with China’s State administration for Industry and Commerce (“SAIC”).
a. USPTO
i. SWAGELOK
1. Reg. No. 595,412 registered September 21, 1954
2. Reg. No. 843,543 registered February 6, 1968
3. Reg. No. 835,359 registered September 19, 1967
4. Reg. No. 2,853,487 registered June 15, 2004
5. Reg. No. 3,487,160 registered August 19, 2008
ii. SWAGELOK.COM
1. Reg. No. 3,045,609 registered January 17, 2006
b. SAIC
i. SWATELOK
1. Reg. No. 317,950 registered March 25, 1999
2. Reg. No. 321,343 registered March 25, 1999
3. Reg. No. 383,948 registered July 10, 1988
4. Reg. No. 3,195,261 registered July 1, 2006
7. Respondent first registered the <swagelockchina.com> domain name on June 3, 2013.
8. Respondent’s <swagelockchina.com> domain name is confusingly similar to Complainant’s SWAGELOK mark.
a. Respondent adds the letter “c” to the SWAGELOK mark.
b. Respondent adds the country name “China” to Complainant’s SWAGELOK mark.
9. Respondent has no rights or legitimate interests in the <swagelockchina.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
b. Respondent is not authorized to use the SWAGELOK trademarks in any way.
c. There is no association or relationship between Complainant and Respondent.
d. Respondent competes with Complainant, and sells competing goods and services in the same market as Complainant.
e. Respondent previously owned the <swagelokchina.com> domain name and has transferred the entire contents of the website to the <swagelockchina.com> domain name.
10. Respondent has registered and is using the disputed domain name in bad faith.
a. Respondent’s use of Complainant’s SWAGELOK mark in the domain name prevents Complainant from registering the domain name for itself.
b. Respondent’s use of the disputed domain name disrupts Complainant’s business.
c. Respondent directly competes with Complainant by offering the same products.
d. Respondent is using the disputed domain name to intentionally cause confusion as to the source, sponsorship, affiliation, or endorsement of the website resolving from the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Swagelok Company, sells various fluid system products in connection with the SWAGELOK mark, such as chemical and petrochemical products, oil and gas, alternative fuels, biopharmaceutical products, and power and semiconductor products. Complainant also provides various services including, logistics business support management, inventory control, equipment rental, procurement, shipping and delivery services, mental treatment, education and training, welding training, assembly, and scientific and technological testing.
Complainant has used the SWAGELOK trademark in commerce since at least as early as October 1948. Complainant has had sales offices located in China since as early as 1985.
Complainant has rights in its SWAGELOK trademarks through its registrations with the United States Patent and Trademark Office (“USPTO”) as well as with China’s State administration for Industry and Commerce (“SAIC”).
e. USPTO
i. SWAGELOK
1. Reg. No. 595,412 registered September 21, 1954
2. Reg. No. 843,543 registered February 6, 1968
3. Reg. No. 835,359 registered September 19, 1967
4. Reg. No. 2,853,487 registered June 15, 2004
5. Reg. No. 3,487,160 registered August 19, 2008
ii. SWAGELOK.COM
1. Reg. No. 3,045,609 registered January 17, 2006
f. SAIC
i. SWATELOK
1. Reg. No. 317,950 registered March 25, 1999
2. Reg. No. 321,343 registered March 25, 1999
3. Reg. No. 383,948 registered July 10, 1988
4. Reg. No. 3,195,261 registered July 1, 2006
Respondent, Tao Tang, registered the <swagelockchina.com> domain name on June 3, 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 has rights in the SWAGELOK and SWAGELOK.COM marks under Policy ¶ 4(a)(i) through its registrations with the USPTO and the SAIC. See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <swagelockchina.com> domain name is confusingly similar to Complainant’s SWAGELOK mark. Respondent adds the letter “c” to Complainant’s SWAGELOK mark along with the country name, “China.” Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Variations such as adding letters, country names, and gTLDs are variations that are insufficient to differentiate a disputed domain name from given mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (finding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part). The Panel finds that the <swagelockchina.com> domain name is confusingly similar to Complainant’s SWAGELOK mark under Policy ¶ 4(a)(i).
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).
Complainant asserts that Respondent has no rights or legitimate interests in the <swagelockchina.com> domain name because it is not commonly known by the domain name under Policy ¶ 4(c)(ii). Complainant states that it has not authorized Respondent to use its marks in any way and there is no relationship between Complainant and Respondent. Complainant asserts that Respondent is strictly a competitor in the same marketplace. The WHOIS information for the <swagelockchina.com> domain name lists “tang tao” as registrant. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant claims that Respondent has no rights or legitimate interests in the <swagelockchina.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant claims that Respondent is misappropriating Complainant’s SWAGELOK marks by selling competing goods and services from the website resolving from the disputed domain name. Complainant alleges that Respondent previously owned the <swagelokchina.com> domain name and now the disputed <swagelockchina.com> domain name features the exact content that was featured on the previous website. Complainant claims that Respondent uses the disputed domain name to compete with Complainant. Previous panels have found that using a confusingly similar domain name to sell products that compete with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a 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 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 or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent is using the <swagelockchina.com> domain name in bad faith because it is preventing Complainant from using the SWAGELOK mark. Previous panels have found that a respondent registers a disputed domain name in bad faith when it does so to prevent the rightful owner of the mark from registering the disputed domain name. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”). However, that a Policy ¶ 4(a)(ii) argument requires evidence of a respondent’s pattern of bad faith registration and use, either by showing that multiple domain names using the complainant’s mark are registered in the case at issue or that the respondent has had numerous adverse UDRP decisions transferring possession of disputed domain names from the respondent to the complainant. Complainant does not provide such evidence. Complainant refers to the transfer of the <swagelokchina.com> domain name from Respondent’s possession in a previous case. See Swagelok Company v. tao tang, FA 1485783 (Nat. Arb. Forum April 22, 2013). However, one case ordering the transfer of one domain name is not sufficient to show a pattern of bad faith use and registration under Policy ¶ 4(b)(ii).
Complainant contends that Respondent has registered and is using the <swagelockchina.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent uses the disputed domain name to disrupt Complainant’s business by diverting Internet users to Respondent’s website where it offers goods and services that Complainant claims are identical to Complainant’s products, and thus compete with Complainant’s business. Complainant’s evidence includes images that depict home pages of Respondent’s disputed domain name, which resolves to a website featuring images of products that appear to be similar, if not the same, as the products Complainant offers on its resolving website. Previous panels have found bad faith use and registration under Policy ¶ 4(b)(iii) where a respondent uses a confusingly similar domain name to resolve to a website offering products or services that compete with a complainant’s business. See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and uses the <swagelockchina.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent has registered and is using the <swagelockchina.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of the disputed domain name attracts unsuspecting Internet users and causes confusion as to the source, sponsorship, association, approval, connection or relationship between Respondent and Complainant in order to sell products in competition with Complainant’s business. Prior UDRP panels have routinely found bad faith under Policy ¶ 4(b)(iv) when a respondent uses a confusingly similar domain name to attract internet users to a website offering services or goods similar or identical to those offered by the complainant. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
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 <swagelockchina.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 4, 2013
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