Swagelok Company v. Guo Qiang
Claim Number: FA1411001588187
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, USA. Respondent is Guo Qiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelokv.com>, registered with Xin Net Technology Corporation.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014. The Complaint was submitted in both English and Chinese.
On November 4, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <swagelokv.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 November 5, 2014, the Forum served the Chinese Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@swagelokv.com. Also on November 5, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Complainant owns the SWAGELOK mark through its trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,195,261, registered January 7, 2006) and with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 595,412, registered September 21, 1954).
ii. Complainant uses the SWAGELOK mark in connection with its business in the manufacturing and distribution of advanced and innovative fluid system products, services and solutions.
i. Policy ¶ 4(a)(i)
1. The <swagelokv.com> domain name is confusingly similar to Complainant’s SWAGELOK mark, because Respondent has simply added the letter “v” to the end of the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <swagelokv.com> domain name. Respondent is neither licensed nor authorized to use the SWAGELOK mark.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to sell competing goods and services to that of Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to sell competing goods and services to that of Complainant, which disrupts Complainant’s business.
2. Respondents conduct will likely cause confusion as to the source, sponsorship, affiliation, or endorsement of the web site at the disputed domain name.
3. Respondent is attempting to pass itself as Complainant.
a. Respondent references SWAGELOK marks in both their website title and in the body of the website.
b. Respondent includes background information on Complainant in the “About Swagelok” section.
2. Respondent did not submit a response.
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, given that there was no Response, determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <swagelokv.com> domain name is confusingly similar to Complainant’s SWAGELOK mark.
2. Respondent does not have any rights or legitimate interests in the < swagelokv.com> domain name.
3. Respondent registered or used the < swagelokv.com> domain name 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.
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 uses the SWAGELOK mark in connection with its business in the manufacturing and distribution of advanced and innovative fluid system products, services and solutions. Complainant claims to own the SWAGELOK mark through its trademark registrations with China’s SAIC (e.g., Reg. No. 3,195,261, registered January 7, 2006) and the USPTO (e.g., Reg. No. 595,412, registered September 21, 1954). Complainant argues that such registrations are sufficient to establish rights in the SWAGELOK mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s argument is supported by previous UDRP decision. See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC and USPTO demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s SAIC and USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <swagelokv.com> domain name is confusingly similar to Complainant’s SWAGELOK mark because Respondent has simply added the letter “v” in the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name differing from a mark by only the addition of a single letter does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). As such, the Panel finds that the <swagelokv.com> domain name is confusingly similar to Complainant’s SWAGELOK mark pursuant to 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); 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.”).
It is Complainant’s contention that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <swagelokv.com> domain name. The Panel notes that the WHOIS information identifies “Guo Qiang” as the registrant of the disputed domain name. Further, Complainant adamantly denies any authorization by Complainant for Respondent to use the SWAGELOK mark. The Panel recalls that Respondent has failed to submit any type of response to rebut Complainant’s arguments. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <swagelokv.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent currently uses the disputed domain to sell competing products and services to that of Complainant. See Complainant’s Ex. 3. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to offer competing products and services to the complainant. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent’s current use of the disputed domain name does not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant argues that Respondent uses the disputed domain name to disrupt Complainant’s business, which qualifies as bad faith under Policy ¶ 4(b)(iii). More specifically, Complainant argues that Respondent uses the disputed domain name to sell competing products and services to that of Complainant. The Panel recalls that Complainant has submitted a screenshot of Respondent’s website along with the Complaint. See Complainant’s Ex. 3. Previous panels have found evidence of bad faith where the respondent is attempting to disrupt the complainant’s business by offering competing goods and services to that of the complainant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). This Panel agrees that Respondent’s current use of the disputed domain was used in a manner conforming to Policy ¶ 4(b)(iii) bad faith.
Additionally, Complainant argues that Respondent uses the disputed domain name to divert unsuspecting and confused Internet users to its own website, in which case, the Internet users will be confused as the association and relationship between the disputed domain name and Complainant. Generally, panels have held that such behavior is evidence of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel agrees with Complainant’s argument, and it finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s <swagelokv.com> domain name is so similar to Complainant’s actual website that Respondent is trying to pass itself off as Complainant. Complainant asserts that Respondent references the SWAGELOK mark in both the website title and throughout the body of the website. Moreover, Complainant claims that Respondent has placed background information on the disputed domain website under the “About Swagelock” tab. The Panel notes that Complainant has submitted a screenshot in the Complaint of both Complainant’s website and Respondent’s website, which Complainant believes demonstrates the striking similarities between the two websites. See Compl., at p. 11. Prior panels have upheld the argument that passing off constitutes bad faith under Policy ¶ 4(a)(iii). The Panel believes that Complainant has provided sufficient evidence that Respondent is attempting to pass itself off as Complainant, and it finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii). Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swagelokv.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 17, 2014
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