Norgren Inc. and Fluid Automation Systems S.A. v. Maria Sukonina
Claim Number: FA1505001621148
Complainant is Norgren Inc. and Fluid Automation Systems S.A. (“Complainant”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Colorado, USA. Respondent is Maria Sukonina (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fasnorgren.com>, registered with OPENNAME 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 26, 2015; the Forum received payment on May 26, 2015.
On June 1, 2015, OPENNAME LLC confirmed by e-mail to the Forum that the <fasnorgren.com> domain name is registered with OPENNAME LLC and that Respondent is the current registrant of the name. OPENNAME LLC has verified that Respondent is bound by the OPENNAME 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 June 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2015 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@fasnorgren.com. Also on June 2, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 29, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant made the following contentions
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant Norgren Inc. is a United States company engaged in the field of motion and fluid control products. Complainant Fluid Automation Systems S.A. is a Swiss company engaged in the field of motion and fluid control products. Complainants are affiliated companies and part of the global IMI Norgren group. Each of the Complainants can claim to have rights to the disputed domain name within the meaning of Rule 1e of the National Arbitration Forum Supplemental Rules. Complainants are hereinafter collectively referred to as Complainant.
2. Complainant has rights in the NORGREN mark through registration of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 950,639, registered January 16, 1973) and rights in the FAS mark through registration with the USPTO (Reg. No. 3,449,647, registered June 17, 2008).
3. The disputed domain name was created on December 13, 2014. It resolves to a parked website that hosts click-through advertisements linking to Complainant and Complainant’s competitors.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it has rights in the NORGREN mark through registration of the mark with multiple trademark agencies including the USPTO (e.g., Reg. No. 950,639, registered January 16, 1973). Complainant also claims to have rights in the FAS mark through registration with the USPTO (e.g., Reg. No. 3,449,647, registered June 17, 2008). Panels have routinely held that registration of marks with a national trademark agency such as the USPTO is sufficient to demonstrate a complainant’s rights in a mark or marks. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). It should also be noted and the Panel so finds that Complainants are affiliated companies and part of the global IMI Norgren group. Each of the Complainants can therefore claim to have rights to the disputed domain name within the meaning of Rule 1e of the National Arbitration Forum Supplemental Rules. Complainants are hereinafter referred to as Complainant. The Panel therefore finds that Complainant has rights in the FAS and NORGREN marks under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <fasnorgren.com> domain name is identical or confusingly similar to Complainant’s NORGREN and FAS marks. Complainant claims that Respondent’s disputed domain name is identical to Complainant’s marks. To support this contention Complainant points to the fact that Respondent’s disputed <fasnorgren.com> domain name incorporates Complainant’s FAS and NORGREN marks in their entirety and merely adds the gTLD “.com.” Panels have held that the addition of a gTLD does not serve to diminish the similarity between a complainant’s marks and a respondent’s disputed domain names. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Panels have also found confusing similarity where a respondent combined a complainant’s mark in a domain name. See McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name). Accordingly, the Panel finds that Respondent’s disputed <fasnorgren.com> domain name is identical to Complainant’s FAS and NORGREN marks in combination. Alternatively, the domain name is confusingly similar to Complainant’s FAS and NORGREN marks under Policy ¶ 4(a)(i) as it includes each of the marks in its entirety.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FAS and NORGREN marks and to use them in its domain name which is identical or confusingly similar to the marks;
(b) Respondent registered the disputed domain name on December 13, 2014 ;
(c) Respondent uses the disputed domain name to resolve to a parked website that hosts click-through advertisements linking to Complainant and Complainant’s competitors.
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant contends that Respondent is not commonly known as the disputed domain name and further contends that there is no evidence, including relevant WHOIS information, that indicates Respondent is known or has ever been known by the disputed <fasnorgren.com> domain name. The Panel notes that the latest WHOIS information related to the disputed domain name indicates that the registrant is listed as “Maria Sukonina.” See Complainant’s Att. Annex B2. Previous panels have found a respondent to be not commonly known by a disputed domain name based on WHOIS and other information. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the 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 the respondent was commonly known by the disputed domain name). The Panel therefore find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant urges that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes Complainant’s attached Annex E that shows Respondent’s disputed <fasnorgren.com> domain name appears to resolve to a parked website that hosts click through advertisements linking to Complainant and Complainant’s competitors. Panels have regularly held that using a domain confusingly similar to a complainant’s mark to host click through advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The Panel finds that Respondent’s use of the disputed domain name to host click-through advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent’s use of the disputed domain name disrupted and diminished Complainant’s business by preventing customers from reaching Complainant’s legitimate websites. The Panel again notes Complainant’s attached Annex E which shows Respondent using the disputed domain name to resolve to a website that features advertisements and links to Complainant and sites presumably selling Complainant’s products. Previous panels have held that using a disputed domain to host advertisements, including those redirecting to complainant’s own website and websites of Complainant’s competitors, can be bad faith disruption under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s use of the disputed domain name is in bad faith pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent should be found to have acted in bad faith because it has purposefully created a likelihood of confusion as to the source of Respondent’s website and does so for commercial gain. The confusion Complainant points to is the similarity between the disputed domain name and Complainant’s marks. Panels have found bad faith where a respondent takes advantage of the confusing similarity between a domain name and a complainant’s mark for commercial gain. 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 accordingly finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant asserts that its trademark registrations for the NORGREN and FAS marks existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, 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).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <fasnorgren.com>, domain name using the NORGREN and FAS marks and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fasnorgren.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 2, 2015
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