American Petroleum Institute v. Asa Zhang / Zhang
Claim Number: FA1401001540536
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Asa Zhang / Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apirig.com>, registered with TUCOWS, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2014; the National Arbitration Forum received payment on January 23, 2014.
On January 24, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <apirig.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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”). TUCOWS, Inc. further confirmed that the language of the registration agreement is English.
On January 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 2014 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@apirig.com. Also on January 27, 2014, 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.
A timely Response was received and determined to be complete on February 3, 2014.
Complainant`s Additional Submission was received on February 7, 2014 in a timely manner according to The Form`s Supplemental Rule #7.
Respondent`s Additional Submission was received on February 10, 2014 in a timely manner according to The Form`s Supplemental Rule #7.
On February 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, American Petroleum Institute, is the nation’s leading trade association for the petroleum and natural gas industry. Complainant traces its beginning to World War I, when Congress and the domestic oil and natural gas industry worked together to help the war effort by ensuring that vital petroleum supplies were rapidly and efficiently deployed to the U.S. armed forces.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the API mark (e.g., Reg. No. 679,642, registered June 2, 1959).
Complainant contends, that the domain name at dispute is confusingly similar to Complainant’s API mark because it comprises Complainant’s API mark in its entirety, along with the generic term “rig” and the non-distinguishing generic top-level domain (“gTLD”) “.com.”
Complainant contends that Respondent has no rights or legitimate interest in the domain name. Further, Respondent is not and has not been commonly known by the domain name at dispute.
Respondent has registered and is using the domain name for a website on which Respondent claims to offer “API Certified” products and to pass itself off as a legitimate licensee or authorized user of Complainant’s API mark.
Complainant contends that Respondent registration and use of the domain name is in bad faith. Respondent is directing Internet users to a website that copies Complainant’s proprietary, copyrighted product specifications in violation of the U.S. Copyright Act and other U.S. federal and state laws.
Respondent uses the domain name for its commercial benefit by falsely suggesting a relationship with Complainant and claiming that its products are “API Certified” when Respondent is not, in fact, a certified distributor or manufacturer or API-certified equipment.
According to Complainant Respondent had knowledge of Complainant’s rights in its API mark when Respondent registered and used the domain name because Respondent’s website openly displays for distribution Complainant’s proprietary product specifications.
Respondent registered the <apirig.com> domain name on March 4, 2012.
B. Respondent
Respondent contends that the domain name <apirig.com> can be easily distinguished with <api.org>. Respondent is a supplier who provides China-made drilling products. Respondent has made a disclaimer on its website.
The <apirig.com> domain name and <api.org> domain name are different types of domains with different domain names and business scopes.
Respondent has made a disclaimer on its website.
C. Additional Submissions
In its Additional Submission Complainant contends, that Respondent’s claims that the acronym API has multiple meanings such as “air pollution index” or “application programming interface” are irrelevant. Respondent unquestionably registered and used the domain name as a means to refer to the Complainant and its API trademark. Respondent’s website is filled with references to Complainant and its certification standards. In fact, Respondent’s website even offered unauthorized copies of Complainant API’s downloadable standards publications. In view of Respondent’s actions and use of the Domain Name to refer to Complainant, there can be no question
Respondent registered and used the Domain Name to trade off of the goodwill of Complainant. Such actions constitute bad faith.
In its Additional Submission, Respondent counters Complainant’s allegations and mainly asserts that it uses the name “apirig” for “Advanced Performance Iron Rig”, which has a completely different meaning with “American Petroleum Institute”.
The Panel finds that:
1. The domain name <apirig.com> is confusingly similar to Complainant’s registered trademarks.
2. The Respondent has not established rights and legitimated interests in the domain name <apirig.com>.
3. The Respondent has registered and is using the domain name <apirig.com> in bad faith.
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.
Complainant argues that it is the nation’s leading trade association for the petroleum and natural gas industry. Complainant states that it traces its beginning to World War I, when Congress and the domestic oil and natural gas industry worked together to help the war effort by ensuring that vital petroleum supplies were rapidly and efficiently deployed to the U.S. armed forces. Complainant contends that it is the owner of trademark registrations with the USPTO for the API mark (e.g., Reg. No. 679,642, registered June 2, 1959). The Panel finds that although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as it can establish rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the API mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that Respondent’s <apirig.com> domain name is confusingly similar to Complainant’s API mark because it comprises Complainant’s API mark in its entirety, along with the generic term “rig” and the non-distinguishing gTLD “.com.” The Panel holds that Respondent’s addition of a generic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). Finally, the Panel determines that Respondent’s inclusion of a gTLD to Complainant’s API mark does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). 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”). Thus, the Panel concludes that Respondent’s <apirig.com> domain name is confusingly similar to Complainant’s API mark under Policy ¶ 4(a)(i).
While Respondent contends that the <apirig.com> domain name is comprised of a common and generic term and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions, this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent has no rights or legitimate interest in the <apirig.com> domain name. Complainant argues that Respondent is not and has not been commonly known by the disputed domain name. Complainant asserts that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its API mark. The Panel observes that the WHOIS record lists “Asa Zhang / Zhang” as the registrant of the disputed domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that respondent was commonly known by the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <apirig.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent has registered and is using the <apirig.com> domain name for a website on which Respondent claims to offer “API Certified” products and to pass itself off as a legitimate licensee or authorized user of Complainant’s API mark. Complainant argues that Respondent is using the disputed domain name to offer unauthorized copies of Complainant’s copyrighted standards, as well as competing products related to Complainant’s petroleum industry-related services and standards. Complainant asserts that Respondent’s false claims that it is a certified provider or manufacturer of API-certified products misleads consumers as to the nature of Respondent’s relationship with Complainant and therefore cannot constitute a bona fide offering of goods or services. Therefore, the Panel agrees that Respondent’s use of the <apirig.com> domain name to pass itself off as Complainant in order to sell competing products 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 Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant asserts that Respondent’s registration and use of the <apirig.com> domain name is in bad faith. Complainant argues that Respondent is directing Internet users to a website that copies Complainant’s proprietary, copyrighted product specifications in a scheme that competes with Complainant’s own business. Since the Panel finds that Respondent is using the disputed domain name to offer competing services, the Panel holds that Respondent is disrupting Complainant’s legitimate business, showing bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent uses the <apirig.com> domain name for its commercial benefit by falsely suggesting a relationship with Complainant and claiming that its products are “API Certified” when Respondent is not, in fact, a certified distributor or manufacturer or API-certified equipment. Complainant argues that Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s API mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. Therefore, the Panel determines that Respondent’s use of the <apirig.com> domain name to pass itself off as Complainant in order to sell competing products is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant claims that Respondent had knowledge of Complainant’s rights in its API mark when Respondent registered and used the <apirig.com> domain name because Respondent’s website openly displays for distribution Complainant’s proprietary product specifications. Complainant also contends that Respondent’s website offers products characterized as “API Certified” and claims that its products are “machined by API or ISO licensed workshops as per western designs and standards.” Additionally, Complainant argues that Respondent registered the disputed domain name over fifty years after the issuance of Complainant’s federal registration for its API mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the disputed domain name, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apirig.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: February 17, 2014
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