American Petroleum Institute v. Nafeea Hosein / API PIPELINE / Fawwaaz Hosein / API Pipeline Construction Co. Ltd.
Claim Number: FA1612001708209
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Nafeea Hosein / API PIPELINE / Fawwaaz Hosein / API Pipeline Construction Co. Ltd. (“Respondent”), Trinidad and Tobago.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apipipeline.com>, <apcltt.com>, and <apiglobal.co>, registered with GoDaddy.com, LLC and Network Solutions, LLC, respectively.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 16, 2016.
On December 19, 2016, GoDaddy.com, LLC and Network Solutions, LLC confirmed by e-mail to the Forum that the <apipipeline.com>, <apcltt.com>, and <apiglobal.co> domain names are registered with GoDaddy.com, LLC and Network Solutions, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Network Solutions, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Network Solutions, LLC registration agreements 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2017 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@apipipeline.com, postmaster@apcltt.com, and postmaster@apiglobal.co. Also on December 21, 2016, 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 March 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
Under UDRP Rule ¶3(c), “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” See also The PNC Financial Services Group, Inc. v. Hildegard Gruener, Case No. FA1505001620119 (FORUM July 14, 2015) (“Other panels have found that multiple named respondents are ‘registered by the same domain holder’ where evidence is provided to Panel that supports a finding that each of the named respondents is actually one-in-the-same entity.”). Complainant believes that the Domain Names are controlled by the same entity because: (1) the WHOIS record for <apiglobal.co> and <apipipeline.com> include identical phone numbers and almost identical addresses; (2) the <apipipeline.com> and <apcltt.com> websites both provide nearly identical contact information (including an email contact ending in “@apiglobal.co”) as the WHOIS record for <apiglobal.co> and <apipipeline.com>; (3) Fawwaaz Hosein is listed as the registrant for both <apiglobal.co> and <apcltt.com>; (4) the <apipipeline.com> WHOIS record provides a contact email ending in @apiglobal.co. Based on these facts, Complainant asserts that the true registrant of each of the Domain Names is the same family-owned and operated entity and/or individuals.
BACKGROUND FACTS
A. Complainant and its Products and Services
1. API is the nation’s leading trade association for the petroleum and natural gas industry.
2. API traces its beginnings 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. At the time, the industry included the companies created in 1911 after the court-imposed dissolution of Standard Oil and the “independents” (i.e., companies “independent” of Standard Oil). The National Petroleum War Service Committee, which oversaw this effort, was initially formed under the U.S. Chamber of Commerce and subsequently as a quasi-governmental body. After World War I ended, momentum began to build to form a national association that could represent the entire industry in the postwar years.
3. API was established on March 20, 1919 to: (1) afford a means of cooperation with the government in all matters of national concern; (2) foster foreign and domestic trade in American petroleum products; (3) promote in general the interests of the petroleum industry in all its branches; and (4) promote the mutual improvement of its members and the study of the arts and sciences connected with the oil and natural gas industry.
4. Beginning in the 1920’s and continuing to the present, API has used the API mark for its association services. These services include dissemination of information regarding legislation for the petroleum and natural gas industry, as well as information about or of interest to the petroleum and natural gas industry; appearances before private and governmental bodies; and encouraging foreign and interstate trade in petroleum and natural gas products. API currently has over 600 members.
5. For more than eighty-five (85) years, API has used API as a trade name and trademark for a wide variety of products and services aimed at the promotion, development, and improvement of the petroleum and natural gas industry. In addition to its association services, API’s services and programs offered under the API mark include certification programs for various products and personnel in the petroleum and natural gas industry, as well as the development and publication of standards, specifications, and recommended practices for the petroleum and natural gas industry.
6. API’s certification program has for many decades facilitated the broad availability of safe, interchangeable products in the petroleum industry. Companies and organizations around the world participate in API’s numerous certification programs that license and register them to assist API in supplying the oil and natural gas industry with products and services. The program certifies facilities manufacturing products and equipment used in the exploration and production of petroleum and natural gas that meet certain API standards, specifications, and recommended practices. Certified companies are entitled to bear API’s certification mark (U.S. Reg. No. 2,353,970) on specified products and equipment.
7. API’s certification mark has appeared on countless products manufactured and sold by numerous companies world-wide. The API Composite List identifies thousands of organizations that have proven their ability to meet API’s stringent quality and product specifications. Since 1993, API has certified seven companies working in Trinidad and Tobago to use API’s certification mark on their products.
8. Most relevantly, the numerous standards API publishes include API Specification 5L, which specifies the requirements companies must meet to manufacture API-certified pipes used in pipeline transportation systems in the petroleum and natural gas industries. API-certified companies may stamp their pipes with the API certification mark. API has certified over 500 companies world-wide in API Specification 5L, including IAL Engineering Services Ltd., operating in two separate locations in Trinidad and Tobago.
9. API also publishes numerous standards related to oil exploration and production, which specify the requirements companies must meet to be API-certified, including standards related to oil field equipment and materials, drilling and production equipment, and exploration and production safety standards.
10. API promotes its products and services on its website located at the domain name <api.org>, which API registered in 1995. API has continuously advertised and promoted its products and services on this website for over twenty years.
a) Complainant’s Trademark Holdings
11. API owns the following U.S. trademark registrations for the API Marks, many of which are incontestable:
i. U.S. Trademark Reg. No. 677,359 for the mark API (shown as ); filed July 14, 1958; issued Apr. 21, 1959; covering products in International Class 16 (“Technical publications and information bulletins issued from time to time”) (asserting a first-use date of Aug. 20, 1924);
ii. U.S. Trademark Reg. No. 840,642 for the mark API; filed Sept. 27, 1966; issued Dec. 12, 1967; covering products in International Class 16 (“Association services-namely, promotion of the American petroleum industry, including development of standards and promotion of research; dissemination of information regarding legislation and of information about and of interest to the petroleum industry; appearances before private and governmental bodies; and encouraging foreign and interstate trade in American petroleum industry products”) (asserting a first-use date of Oct. 29, 1924);
iii. U.S. Trademark Reg. No. 1,264,555 for the mark API (shown as ); filed Sept. 29, 1982; issued Jan. 17, 1984; covering services in International Class 42 (“Association Services-Namely, Promotion of the General Development and Improvement of the American Petroleum Industry, Including Development of Standards and Promotion of Research; Dissemination of Information Regarding Legislation and of Information About and of Interest to the Petroleum Industry; Appearances Before Private and Governmental Bodies; and Encouraging Foreign and Interstate Trade in American Petroleum Industry Products”) (asserting a first-use date of Aug. 20, 1924);
iv. U.S. Trademark Reg. No. 2,353,970 for the mark API Q (shown as ); filed Apr. 10, 1997; issued May 30, 2000; covering services in International Class A (“products and equipment for oil and gas exploration, drilling, production, transportation, refining; materials for oil and gas exploration, drilling and production”) (asserting a first-use date of Sept. 1997);
v. U.S. Trademark Reg. No. 679,642 for the mark API; filed Sept. 19, 1958; issued June 2, 1959; covering products in International Class 16 (“Publications relating to testing methods, specifications and standards in the petroleum industry and in the field of supply for the petroleum industry”) (asserting a first-use date of Oct. 29, 1924).
12. API is also the owner of numerous trademark registrations and applications for its API Marks in countries around the world. These registrations illustrate that by the time the Domain Names were created, the API Marks were internationally recognized.
13. As noted above, API has long done business in Trinidad and Tobago, having certified seven companies to use the API Q-certification mark. API has recently applied to register the following marks in Trinidad and Tobago:
i. Application No. 52144 for the mark API Q & Device, filed December 5, 2016; covering services in International Class 42 (“Quality assurance services in the fields of petroleum products, petroleum pipes; petroleum drilling products, and petroleum refining products; developing standards for the petroleum industry; providing on-line databases in the fields of petroleum, petrochemical, natural gas, and energy industries”);
ii. Application No. 52145 for the mark API, filed December 5, 2016; covering products in International Class 4 (“Petroleum; engine oils; gear oils; lubricating grease; automobile fuels; diesel exhaust fluids”); products in International Class 6 (“Goods of common metal not included in other classes; pipes and tubes of metal; valves of metal, other than parts of machines; reservoirs of metal; chains of metal.”); products in International Class 7 (“Machinery for oil and gas exploration, drilling, production and transportation; unmanned transportation conveyors; cranes; fluid separators; pumps; compressors”); products in International Class 16 (“Publications, standards, newsletters, brochures, guides, and books in the fields of petroleum, petrochemical, natural gas, and energy industries”); and services in International Class 42 (“Quality assurance services in the fields of petroleum products, petroleum drilling products, and petroleum refining products; developing standards for the petroleum industry; providing on-line databases in the fields of petroleum, petrochemical, natural gas, and energy industries”).
b) Respondent’s Infringing Activities
14. Respondent registered <apipipeline> on May 25, 2013, <apcltt.com> on Nov. 11, 2014, and <apiglobal.co> on Nov. 16, 2011. Therefore, Complainant’s trademark rights in the API Marks, based on its trademark registrations and on its common-law rights acquired through use of the API Marks, predate Respondent’s registrations by over eighty years. Further, given the international recognition of the API Marks, Respondent undoubtedly knew of the API Marks when it registered the Domain Names.
15. Respondent’s registration of the Domain Names capitalizes on the fame and substantial goodwill associated with Complainant’s API Marks not only to redirect users to websites that offer services both related and unrelated to Complainant’s business, but also to fraudulently lead customers to believe that Respondent’s products meet the rigorous quality and product specifications certified by API.
16. The <apipipeline.com> domain name resolves to a webpage for “A.P.I. Pipeline Construction Company Ltd.,” a company involved in pipeline construction. Here, Respondent displays on every webpage a logo that is almost identical to Complainant’s famous certification API Q logo and other API logos.
By displaying this logo on its website, Respondent falsely suggests that its pipeline-related products and services are API-certified. Further, Respondent’s website displays prominently on every webpage the API mark and Respondent even refers to itself as “API.”
17. The <apcltt.com> domain resolves to a webpage for “API Petroleum Company Ltd.,” which is related to oil exploration and production. As above, Respondent’s intent to pass itself off as affiliated with API is shown by the fact that the website displays the API mark prominently on every webpage. Respondent even refers to its “‘API’ brand.”
18. The <apiglobal.co> domain capitalizes on the fame and goodwill of the API Marks to lure users to a website for “Aesthetics & Beauty Academy Ltd.”
19. Nothing on any of these websites indicates that “API” might have any meaning other than “American Petroleum Institute.”
20. Respondent has no trademark rights in the Domain Names, nor has Respondent ever been known by the Domain Names. Until recently, Respondent used a privacy service to register the <apipipeline.com> and <apcltt.com> domain names and the WHOIS record for <apiglobal.co> listed the “Registrant Organization” as “API Pipeline Construction Co. Ltd.” Following the filing of this complaint, the privacy service was lifted, and API PIPELINE is now listed as the “Registrant Organization for <apipipeline.com>. These WHOIS records, however, do not demonstrate Respondent was commonly known by that name prior to registering the Domain Names. Respondent appears to have registered a company in Trinidad and Tobago called “API Petroleum Company” on Mar. 9, 2007 and a company called “API Construction Company” on Nov. 5, 2015. Not only had Complainant been internationally recognized (and done business in Trinidad and Tobago) for years prior to any of these registrations, but also these business registrations are insufficient to establish that Respondent has ever been known by the names “API Pipeline,” “APCLTT,” or “API Global.” With nothing to suggest “API” refers to anything other than Complainant, if anything, these registrations further demonstrate Respondent’s effort to pass itself off as an API-related entity.
21. Finally, the use of the API Marks in three separate domain names is evidence of Respondent’s pattern of bad-faith registration of API-formative domain names.
LEGAL GROUNDS
A. The Domain Names are Confusingly Similar to Complainant’s API Marks
22. The domain names <apipipeline.com> and <apiglobal.co> are confusingly similar to Complainant’s API Marks because they incorporate Complainant’s API mark in its entirety, adding only the generic terms “pipeline” and “global,” and the non-distinguishing gTLD “.com.” and ccTLD “.co,” respectively. Such changes are insufficient to distinguish these domain names from Complainant’s API Marks. UDRP panels have consistently held that the addition of generic words and TLDs in a domain name is inconsequential when conducting an analysis of confusing similarity. In fact, the addition of “pipeline” actually heightens the confusion because that generic term is a common term in Complainant’s business. Similarly, the addition of “global” heightens the confusion because of API’s worldwide presence. See, e.g., Caterpillar Inc. v. Pipetech, Case No. FA0706001000030 (FORUM July 17, 2007) (“Respondent’s <catpipeline.com> domain name is confusingly similar to Complainant’s CAT mark under the parameters of Policy ¶4(a)(i). In addition to containing Complainant’s mark in its entirety, the disputed domain name includes a common term directly relating to Complainant’s business . . . . These additions do not distinguish the disputed domain name from Complainant’s mark under Policy ¶4(a)(i) as the term added relates to Complainant’s business and a top-level domain is a required aspect of all domain names.”); Chevron Intellectual Property LLC v. dns admin / Carvajal Informacion, Case No. FA1408001573067 (FORUM Sept. 5, 2014) (“The <chevronpetroleum.com.co> domain name is confusingly similar to the CHEVRON mark. The domain name adds the top-level domain ‘.com.co’ and the term ‘petroleum.’ The ‘.com.co’ is not relevant. . . . The Panel agrees the related term ‘petroleum’ provides little distinction and serves to add confusion to the domain name.”); Cargill, Incorporated v. William M. Carpenter, Case No. FA1603001665608 (FORUM Apr. 14, 2016) (“The Domain Name consists of the Complainant’s CARGILL mark, the generic term ‘global’ and the gTLD .com. Prior panels have found that adding a generic term does little to remove confusing similarity from a disputed mark.”).
23. The domain name <apcltt.com> is confusingly similar to Complainant’s API family of marks, because it includes the visual equivalent of all three letters in the API mark (substituting the visually similar “l” for the “i”) along with other letters in the acronym—“c” and “tt.” The “tt” refers to the geographically descriptive “Trinidad and Tobago,” and can therefore be ignored for purposes of analyzing confusing similarity. See Statoil ASA v. Ken Frank, Case No. D2016-0658 (WIPO June 8, 2016) (geographically descriptive elements like “uk” do not differentiate a domain name from a complainant’s mark). The dominant letters of Complainant’s mark, the letters “A” and “P,” which stand for “American Petroleum,” are in the same position as in the <apcltt> domain name. This domain therefore reads as a typo-squatting version of an API domain directed toward Trinidad and Tobago. Moreover, Respondent’s website and its prominent display of the API mark, as well as its reference to its “API brand,” confirms Respondent’s attempt to falsely pass itself off as an API-related entity. In such cases, the contents of a respondent’s website may bear upon the analysis of confusing similarity. See Securities Investor Protection Corporation v. Andy Guevarra, Case No. FA1102001371560 (FORUM Mar. 22, 2011) (“Complainant contends that the <srpla.org> domain name is confusingly similar to its SIPC mark. The domain name includes two of the same letters in the mark along with other letters within the acronym, ‘r,’ ‘l,’ and ‘a.’ The disputed domain name also includes the generic top-level domain (‘gTLD’) ‘.org.’ The Panel finds that the dominant letters of Complainant’s mark, the letters ‘S’ and ‘P,’ which stand for ‘Securities’ and ‘Protection,’ are in the same position in Respondent’s disputed domain name, which also uses the ‘s’ and ‘p’ as acronyms for ‘securities’ and ‘protection.’ The Panel determines that based on the position of these two main consonants, the disputed domain name and Complainant’s mark are phonetically similar.”). (“Although use of the domain name is typically not considered in an analysis of whether the domain name is confusingly similar to the mark, here, the Panel notes that the website to which the domain name resolves contains language taken verbatim from Complainant’s website. The Panel finds that the website content at <srpla.org> domain name indicates it was registered with the intent to be confusingly similar to Complainant’s SIPC mark and that the combination of a strikingly similar domain name and a fraudulently similar website, make the domain name confusingly similar to SIPC.”); Kames Capital PLC v. Tom Harrison / Kames Capital Plc Limited, Case No. FA1604001671583 (FORUM May 20, 2016) (“Having regard to all the circumstances of the instant case, including the evidence of the fraudulent activities for which the domain name has been used, the Panel finds that it may have regard to the contents of the website and having done so finds that the disputed domain name [<kclfx.com>] is confusingly similar to Complainant’s [KAMES CAPITAL] trademark.”); Starwood Hotels & Resorts Worldwide, Inc., Worldwide Franchise Systems, Inc., The Sheraton, LLC, Westin Hotel Management, L.P. v. Zeng Zheng, Lin Qing Feng, Case No. D2013-0840 (WIPO July 12, 2013) (“The fact that the disputed domain names redirect users to websites promoting Complainant’s hotel and using copied images and text from Complainant’s official website, helps this Panel to conclude that the disputed domain name <sz-ostin.com> is confusingly similar to Complainant’s [WESTIN] trademarks.”); id. (“[T]he content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity.”).
B. Respondent Has No Rights Or Legitimate Interest In The Domain Names
24. Respondent has no rights or legitimate interest in the Domain Names for the following reasons.
25. First, Respondent has chosen domain names (<apipipeline.com> and
<apcltt.com>) that are confusingly similar to Complainant’s API Marks, not only to redirect users to websites promoting goods and services related to Complainant’s business for Respondent’s own commercial gain, but also to falsely pass itself off as a provider of API- certified goods and services. Numerous Panel decisions have held that such uses of a domain name do not constitute a bona fide offering of goods or services, and do not constitute fair use under the UDRP. See, e.g., American Petroleum Institute v. Asa Zhang / Zhang, Case No. FA1401001540536 (FORUM Feb. 17, 2014) (“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.”); Hewlett-Packard Development Company, L.P. v. Navamani Mathavadian Selvaraj / Nava Mani / Whois Agent LiquidNet US LLC / 123-hp.co, Case No. FA1609001696018 (FORUM Nov. 2, 2016) (“Respondent is passing itself off as Complainant for financial gain. When a respondent clearly copies a complainant’s web offerings or marks, this usually results in a panel finding they have no rights or legitimate interest.”); Fadal Engineering, LLC v. Strizich, Case No. FA1409001581942 (FORUM Nov. 13, 2014) (“The Panel finds that Respondent’s use of the <fadaldepot.com> domain name to sell products related to Complainant without authorization does not amount to a bona fide offering of goods or services under policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).
26. Similarly, Respondent has chosen a domain name (<apiglobal.co>) that is confusingly similar to Complainant’s API Marks to redirect users to a website for services that are unrelated to those offered by Complainant for Respondent’s own commercial gain. Numerous Panels have held that such uses of a domain name do not constitute a bona fide offering of goods or services, and do not constitute fair use under the UDRP. See, e.g., Microsoft Corporation v. WHOISAGENT WHOISAGENT / DSA QWE INC., Case No. FA1609001694679 (FORUM Oct. 26, 2016) (“Even where a respondent’s use can be considered unrelated to a complainant’s normal business operations under a relevant mark, panels have found a lack of rights and legitimate interests.”); Haru Holding Corporation v. AI Matusita, Case No. FA1606001679867 (FORUM Aug. 11, 2016) (where complainant’s HARU mark was used in connection with Japanese-fusion cuisine, “Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <harusushicafe.com> domain name. Rather, Complainant contends that the domain name resolves to an unrelated website offering consumer financial services. Previous panels have found such unrelated use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.”); Baylor University v. Agus Felani / AKMG, Case No. FA1509001636983 (FORUM Oct. 14, 2015) (“The panel have declines [sic] to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where Respondent uses an identical domain name to promote its own unrelated products or services.”); Good Chevrolet, Inc. v. Shingo Kurokawa, Case No. FA1410001586521 (FORUM Nov. 28, 2014) (no rights or legitimate interests where respondent took complainant’s CHEVY and GOOD CHEVY mark and used them in a domain name resolving a Japanese language website where respondent sought to financially benefit by marketing its skill and knowledge of voice acting).
27. Second, Respondent is not, and has never been, commonly known by the Domain Names (either “API Pipeline,” “APCLTT,” or “API Global”), and Complainant has not authorized Respondent to use the API Marks. Though the WHOIS records for the domain names
<apiglobal.co> and <apipipeline.com> list the “Registrant Organization” as “API Pipeline Construction Co. Ltd.” and “API PIPELINE” respectively, such evidence is insufficient on its own to show Respondent was commonly known by that name prior to registering the Domain Names (nor can the name “API Pipeline Construction Co. Ltd.” give rise to any rights in the name “API Global”). Similarly, Respondent appears to have registered company names in Trinidad and Tobago, specifically “API Petroleum Company” and “API Construction Company.” These registrations cannot give rise to any rights or legitimate interest in names “API Pipeline,” “APCLTT,” or “API Global.” See President and Fellows of Harvard College v. Halil CIL / Union of Brands, Case No. FA1511001645647 (FORUM Dec. 18, 2015) (“Included in the Response is a copy of the Certificate of Incorporation of a UK company by the name of Harvard Publishers UK Ltd. Respondent is the sole director and shareholder. Panel observes, first, that of and by itself, that document does not show use of any name, still less that Respondent might be commonly known by that name; secondly, that evidence of use of that company name would only be relevant to possible interests in the domain name <harvardpublisher.org> [which was not-at-issue] . . . .”); Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu, Case No. FA1509001639399 (FORUM Nov. 9, 2015) (finding no rights or legitimate interests in the domain name where “Respondent says it is registered in Gambia and has been in operation for less than one year. There is no evidence under Policy ¶4(c)(ii) that, prior to the registration of the Domain Name, Respondent was commonly known by the Domain Name.”) (emphasis added); Giant Eagle, Inc. v. Giant Eagle/Giant Eagle Inc., Case No. FA1410001586562 (FORUM Dec. 6, 2014) (“The WHOIS information lists ‘Giant Eagle’ of ‘Giant Eagle Inc’ as the registrant. Nevertheless, there is no evidence of any outside association between Respondent and the ‘Giant Eagle Inc’ name beyond Respondent’s own self-serving association. Accordingly, the Panel holds that Respondent is not commonly known by the gianteagleinc.com> name pursuant to Policy ¶4(c)(ii).”). Moreover, given Complainant’s international recognition, Respondent’s corporate registrations were likely a sham to pass itself off as being associated with Complainant. See Google Inc. v. GOOGLESERVICES, Case No. FA1105001391118 (FORUM July 6, 2011) (“This Panel is satisfied that on the balance of probabilities Respondent’s company GOOGLE SERVICES LIMITED never traded and was registered as a sham in an endeavor to give the registration of the two domain names some legitimacy. Based on the evidence before this Panel Complainant had already established a reputation and goodwill in the GOOGLE mark when Respondent registered the disputed domain name and the eponymous United Kingdom registered company.”); Exxon Mobil Corporation v. newatlas / newatlas c/o salah elsokary / c/o EXXONMOBIL-EMIRATES.NET, Case No. FA1108001401904 (FORUM Aug. 18, 2011) (“Respondent’s [corporate registrations] are insufficient to demonstrate that Respondent is commonly known by the domain name under Paragraph 4(c)(ii), and it appears to the Panel that Respondent adopted its name solely for the purpose of falsely passing itself off as being associated with Complainant.”).
28. Finally, Respondent has no rights in the domain names <apipipeline.com> and <apcltt.com> because it registered, and has held, these domain names using privacy services. See, e.g., Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir, Case No. FA1511001649807 (FORUM Jan. 4, 2016) (“Respondent acquired no rights because it registered to the domain name using a privacy service. The disclosed registrant has no interest in the domain name. The underlying beneficial owner’s identity is not disclosed. Respondent has done nothing to publicly associate itself with the domain name. Therefore, Respondent has acquired no rights.”); MG Icon LLC v. DNS MANAGER / HTTP GROUP, Case No. FA1511001649222 (FORUM Jan. 4, 2016) (no rights where “[t]he domain name was registered using a privacy service. Respondent did nothing to publicly associate itself with the domain name.”); LD Products, Inc. v. Whois Agent / Whois Privacy Protection Service, Inc., Case No. FA1311001528680 (FORUM Dec. 11, 2013) (“Finally, Respondent registered the disputed domain name by using a privacy service. This means the real respondent’s name is not associated with the disputed domain name, which is essentially owned by a naked trustee. This means the real respondent cannot acquire rights to the disputed domain name because the real respondent does not own it of record.”).
C. Respondent’s Registration and Use of the Domain Names in Bad Faith
29. Respondent’s registration and use of the Domain Names squarely meet the grounds of bad faith outlined in UDRP Section 4(b), as well as additional grounds of bad faith defined in previous UDRP decisions.
30. First, Respondent’s registration and use of the domain names <apipipeline.com> and <apcltt.com> meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent intentionally selected, registered, and is using these domain names to attract internet users to its website for commercial gain by engendering confusion and mistake with Complainant and its API Marks and name as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent’s services. Respondent’s websites at <apipipeline.com> and <apcltt.com> increase the confusion by incorporating the API mark on the websites, and the website at <apipipeline.com> even incorporates a logo similar to API’s famous logos in an attempt to fraudulently pass itself off as an API-certified provider of goods and services. UDRP Panels have consistently held that such activities constitute bad faith. See American Petroleum Institute v. Asa Zhang / Zhang, Case No. FA1401001540536 (FORUM Feb. 17, 2014) (“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).”); Am. Online, Inc. v. Miles, FA0203000105890 (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.”).
31. Respondent’s registration and use of the domain name <apiglobal.co> also qualify as bad faith under Section 4(b)(iv) of the UDRP. Respondent intentionally selected, registered, and is using this domain name to lure internet users to its website for commercial gain by engendering confusion and mistake with Complainant and its API Marks and name as to the source, sponsorship, affiliation, connection, and/or endorsement of Respondent’s services. Though the website relates to a beauty academy, nothing on the website indicates how the domain <apiglobal.co> relates to the content advertised. Even where the services offered at a respondent’s website differ from those offered by a complainant, where circumstances suggest Respondent is attempting to profit from the goodwill associated with a complainant’s mark, panelists have found bad faith. See, e.g., The Vanderbilt University v. U Incorporated, Case No. FA0701000893000 (FORUM Feb. 19, 2007) (“By diverting Internet users to its own website and promoting books unrelated to Complainant’s university under the VANDERBILT mark, Respondent is taking advantage of the confusing similarity between the <vanderbilt.mobi> domain name and Complainant’s VANDERBILT in order to profit from the goodwill associated with the mark, and that such registration and use constitutes bad faith under Policy ¶4(b)(iv).”); Yahoo! Inc. v. glenn coffey / heavenlytouch corp, Case No. FA1412001593862 (FORUM Jan. 20, 2015) (“The Panel again notes that the disputed domain name is used to promote Respondent’s own commercial offerings relating to hair care products. The Panel finds that Respondent’s commercial offerings at the <yahoo-beauty.com> domain name provides evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Good Chevrolet, Inc. v. Shingo Kurokawa, Case No. FA1410001586521 (FORUM Nov. 28, 2014) (“The Panel recalls that the disputed domain name [<goodchevy.com>] resolves to a website comprised of Japanese language content promoting Respondent’s voice acting attributes. As the Panel agrees that the use of the domain name is creating an opportunity for Respondent to profit from a likelihood of confusion, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶4(b)(iv).”).
32. Second, Respondent’s registration and use of the Domain Names constitute bad faith under Section 4(b)(iii) of the UDRP because Respondent has disrupted Complainant’s business. Respondent has used the Domain Names for websites that offers services not only related to Complainant’s business, but also to fraudulently suggest its products are certified by API. See Yahoo! Inc. v. veyselkubat, Case No. FA1610001698998 (FORUM Nov. 28, 2016) (“Panels have typically construed ‘competitor’ broadly and held that using a confusingly similar domain name to compete with a complainant is evidence of bad faith pursuant to Policy ¶4(b)(iii). . . . As the Panel believes that Respondent is commercially gaining from the confusion of the disputed domain name with Complainant’s YAHOO! mark, it holds Respondent in violation of Policy ¶¶4(b)(iii) and (iv).”), citing Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Even where a respondent’s website does not offer services that compete with a complainant’s services, panels have found bad faith. See, e.g., Yahoo! Inc. v. glenn coffey / heavenlytouch corp, Case No. FA1412001593862 (FORUM Jan. 20, 2015) (“Complainant [Yahoo!] argues that Respondent’s use of the disputed domain name serves to disrupt Complainant’s business as the domain name interferes with Complainant’s ability to control its mark. Complainant states further that even if Respondent is not a direct competitor, Policy ¶4(b)(iii) is still implicated as Respondent’s activities are clearly in opposition to Complainant. Prior panels have supported this reading of Policy ¶4(b)(iii). . . . The Panel here finds evidence of bad faith under Policy ¶4(b)(iii) based on Respondent’s use of the disputed domain name to sell hair care products in a manner that is disruptive of Complainant’s own offerings.”).
33. Third, Respondent has engaged in a pattern of bad faith registration and use of domain names under Policy ¶4(b)(ii). Respondent has registered three domain names that are confusingly similar to Complainant’s API Marks. See Little League Baseball, Inc. v. Genre Bend, Case No. FA1512001650894 (FORUM Jan. 12, 2016) (finding registration of <iamlittleleague.org> and <iamlittleleague.com> supported a finding of bad faith registration and use under Policy ¶4(b)(ii) because “[p]rior panels have held that a respondent registering multiple domains that reflect another’s mark has acted in bad faith.”); AOL Inc. v. Kenn Gividen, Case No. FA1302001485005 (FORUM March 25, 2013) (“Complainant also argues that Respondent’s bad faith registration and use is evident through the fact that two infringing domain names are present in this current dispute. The Panel agrees that Respondent’s registration of two domain names that are confusingly similar to THE HUFFINGTON POST mark is evidence of Policy ¶4(b)(ii) bad faith use and registration.”); Vera Bradley, Inc. v. zhenhua ai/aizhenhua, Case No. FA1210001466574 (FORUM Dec. 19, 2012) (“The Panel agrees with Complainant and finds that the registration of the two domain names at issue in the current dispute, as well as Respondent’s other domain name registrations are sufficient for the Panel to find bad faith under Policy ¶4(b)(ii) in the present dispute.”); YAHOO! INC v. SYRYNX, INC., D2000-1675 (WIPO Jan. 30, 2001) (finding a pattern of bad faith registration pursuant to Policy ¶4(b)(ii) in the respondent’s registration of two domain names incorporating the complainant’s YAHOO! mark).
34. Fourth, Respondent’s efforts to conceal its identity by using two different privacy services to register the Domain Names is evidence of bad faith registration and use. When the use of a privacy service by a registrant adversely affects or obscures the facts of a proceeding (such as the full scope of a registrant’s ownership or activities with respect to a domain name), bad faith may be found. See, e.g., Illumina, Inc. v. Ryan G Foo / PPA Media Services, Case No. FA1609001693460 (FORUM Oct. 26, 2016) (“However, the totality of the circumstances, which surround a respondent’s engagement of a privacy service, may give rise to a finding of bad faith registration and use. . . . Therefore, the Panel agrees that Respondent utilized a privacy shield in a manner that materially adversely affects or obscures the facts of this proceeding, and the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii).”); Energizer Brands, LLC v. Hulmiho Ukolen / Poste restante, Case No. FA1604001672224 (FORUM June 13, 2016) (“The Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. . . . [T]he Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶4(a)(iii).”).
35. Finally, in light of: (1) Complainant’s world-wide trademark registrations for its API Marks; (2) Complainant’s long-standing use of the API Marks; (3) the fact that the Domain Names are confusingly similar to Complainant’s API Marks; (4) the international recognition of the API Marks; and (5) the fact that Respondent has created websites that not only offer goods and services related API’s business, but also a website that fraudulently holds Respondent out as authorized to provide API-certified goods and services, Respondent undoubtedly knew of Complainant’s rights in the API Marks prior to registering the Domain Names. By registering the Domain Names with knowledge of Complainant’s rights in the API Marks, Respondent acted in bad faith. See Illumina, Inc. v. Melanie Taylor, Case No. FA1609001693464 (FORUM Oct. 12, 2016) (“Finally, given Complainant’s federal registrations of its ILLUMINA Marks, the fame of Complainant’s ILLUMINA Marks, Complainant’s long-standing use of the ILLUMINA Marks, and the fact that the Domain Name comprises a confusingly similar version of Complainant’s ILLUMINA Marks, Respondent undoubtedly knew of Complainant’s rights in the ILLUMINA Marks prior to registering the Domain Name. By registering the Domain Name with knowledge of Complainant’s rights in the ILLUMINA Marks, Respondent acted in bad faith.”); Church Mutual Ins. Co. v. Paul Looney, Case No. FA1603001668317 (FORUM May 17, 2016) (“Due to: (1) Complainant’s federal registrations (2) fame of the CHURCH MUTUAL mark (3) Complainant’s use of the mark (4) the domain name being confusingly similar to the CHURCH MUTUAL mark, and (5) Respondent impersonating Complainant through the disputed domain name, Respondent had actual knowledge of Complainant’s rights in the mark when Respondent registered the disputed domain name. Therefore, Respondent registered the <churchrnutual.com> domain name in bad faith under Policy ¶4(a)(iii).”); VisaHQ.com. Inc. v. Chau Tran / Vietnam Visa HQ, Case No. FA1607001683085 (Aug. 17, 2016) (“Complainant has multiple trademark registrations in several countries. Complainant has been mentioned in the worldwide press. Complainant recently announced an expansion into this area of the world. Respondent’s use of elements on its website are strikingly similar to Complainant’s website. This indicates to the Panel’s satisfaction Respondent knew of Complainant’s mark when the domain was registered…and Respondent intended to capitalize on that fact.”).
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent submitted the following email:
I act on behalf of A.P.I. Pipeline Construction Company Limited , API Petroleum Company Limited and API Construction Company Limited. As per our conversation earlier this week we are humbly requesting at least 6 (six) months to halt usage of the domains in question and subsequently transfer same to your clients, complete the name change of our organizations and update our banking, clients, contractual and other relevant information regarding same.
Please note the following as we do not want to be viewed as trying to purport being affiliated with your prestigious clients or representing their organization. A.P.I. Pipeline Construction Company Limited has been in existence since 1989 using the same logo that is currently used. It was formed by my father and my grand-father respectively and with no intention of misrepresenting or pretending to be affiliated with your clients organization. My father passed away in 2014 (Salim Hosein) and my grand-father (Feroze Hosein) has suffered two major strokes since 2009 rendering him unfit for any activity. It was not their intention to place the companies that they built in such a situation, however we are prepared to fix the issue with some help from your good selves.
We are a fairly successful company in our sector and you will appreciate that our name is synonymous in our respective industry. For this reason we are requesting sufficient time to phase out our current names, and be given a fair opportunity to re-market ourselves and contact details throughout the industry.
I look forward to your response on behalf of your clients.
(1) the <apiglobal.co> domain name only 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 <apiglobal.co> domain name only; and
(3) the <apiglobal.co> domain name only has been registered and is being used 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(f), 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 (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.”).
However, Complainant must prove its case even in the face of a default. Contrary to a court case, the Panel must evaluate the evidence and render a decision based upon the facts before it.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant claims:
(1) the WHOIS record for <apiglobal.co> and <apipipeline.com> include identical phone numbers and almost identical addresses;
(2) the <apipipeline.com> and <apcltt.com> websites both provide nearly identical contact information (including an email contact ending in “@apiglobal.co”) as the WHOIS record for <apiglobal.co> and <apipipeline.com>;
(3) Fawwaaz Hosein is listed as the registrant for both <apiglobal.co> and <apcltt.com>;
(4) the <apipipeline.com> WHOIS record provides a contact email ending in @apiglobal.co.
This Panel finds Respondents are in reality a single entity or are controlled by a single entity. Therefore, this Proceeding will continue as filed.
Complainant is a national trade association for the petroleum and natural gas industry. Complainant uses the API mark in conjunction with its business. Complainant registered the API mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 679,642, registered June 2, 1959) Complainant has registered the API mark with a variety of government trademark entities throughout North and South America, Europe, Asia, and Africa. While Complainant has filed an application to register its mark in Trinidad and Tobago, apparently such registration remains pending and has not yet been granted. Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even though Respondent is in another country. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by Respondent and are sufficient evidence for Complainant’s rights under Policy ¶4(a)(i).”). Complainant’s numerous registrations are sufficient to show its rights in the API mark.
Complainant claims Respondent’s <apipipeline.com> and <apiglobal.co> are confusingly similar to Complainant’s API mark because they incorporate the mark in its entirety, adding the generic terms “pipeline” and “global,” as well as the “.com” gTLD and the “.co” ccTLD. A domain name and a mark are confusingly similar when a domain name contains complainant’s entire mark and differs only by the addition of a generic descriptive phrase and top-level domain. The differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). Furthermore, Complainant notes that the generic terms are representative of Complainant’s business and worldwide presence. Thus, “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶4(a)(i).” Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Forum Apr. 23, 2004). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.
Complainant claims Respondent’s <apcltt.com> is confusingly similar to the API mark because it contains all three of the letters in the mark, substituting the letter “L” for the letter “i,” adding the letter “c,” the geographic abbreviation “tt” to presumably represent “Trinidad and Tobago,” and the “.com” gTLD. “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶4(a)(i) is appropriate.” Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015). Frankly, this Panel does not believe Complainant has carried its burden of proof regarding this domain name. While this Panel understands Complainant’s claim, the <apcltt.com> domain name and the API mark are just not confusingly similar under ¶4(a)(i).
While Respondent’s <apipipeline.com> and <apiglobal.co> are confusingly similar to Complainant’s API mark, <apcltt.com> is not.
The Panel finds Policy ¶4(a)(i) satisfied regarding <apipipeline.com> and <apiglobal.co>, but not satisfied regarding <apcltt.com>.
The Panel need not consider the issue of <apcltt.com> further.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in <apipipeline.com> and <apiglobal.co>. Complainant claims Respondent is not commonly known by the disputed domain names. WHOIS information associated <apipipeline.com> and <apcltt.com> indicates Respondent initially registered the domain names using a privacy service, “Perfect Privacy, LLC” and “Domains By Proxy, LLC,” to shield its identity. Once this proceeding started, the WHOIS information was unmasked to identify Respondent for <apipipeline.com> as “FORUMeea Hosein” of “API PIPELINE”. WHOIS information for <apiglobal.co> identifies Respondent as “Fawwaaz Hosein” of “API Pipeline Construction Co. Ltd.” It appears Respondent is commonly known as <apipipeline.com> under Policy ¶4(c)(ii), even though Respondent registered the domain name using a privacy service.
There is a conflict between what the web site claims is the owner of <apiglobal.co> (Aesthetics & Beauty Academy Ltd) and the registered owner of <apiglobal.co> (API Pipeline Construction Co. Ltd.). This Panel would be hard pressed to believe patrons seeking a beauty school would elect to attend one run by “API Pipeline Construction Co. Ltd.” It is unlikely the beauty school is actually known as “API Pipeline Construction Co. Ltd.” While it is very likely Respondent inadvertently registered the <apiglobal.co> domain name under a different business, this Panel will not correct that error. It is up to a Respondent to register its domain name properly to the business reflected in the domain name. Respondent is not commonly known by <apiglobal.co>. Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003). Furthermore, Respondent is not actually offering bona fide goods or services under that domain name under Policy ¶4(c)(i) (even though some other possibly related entity might be doing so). While the schooling may be offered, it clearly isn’t being offered by Respondent.
Complainant claims it has not authorized or licensed Respondent to use the API mark in any regard, nor is Respondent affiliated with Complainant. Complainant claims Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. This appears to be not true for the <apipipeline.com> domain name. Respondent is apparently a company that performs as described on the web site. While it is very possible the original company name was picked in 1998 to take advantage of the luster around Complainant’s internationally known mark, that does not detract from the fact Respondent has operated locally under that name for nearly twenty years. Such operations constitutes a bona fide offering of goods and services under Policy ¶4(c)(i). This Panel does not express an opinion on whether or not Respondent’s name infringes on Complainant’s trademark, merely that the <apipipeline.com> domain name is not involuntarily transferable under the UDRP.
The Panel finds Policy ¶4(a)(ii) satisfied regarding <apiglobal.co> but not satisfied regarding <apipipeline.com>.
The Panel is down to only <apiglobal.co> at this point.
Complainant claims Respondent registered and is using <apiglobal.co> in bad faith. Complainant asserts that Respondent registered three domain names infringing on Complainant’s rights to the API mark, evincing a pattern of bad faith registrations. This Panel is unconvinced because Complainant has been able to reflect its mark in a domain name. This means Policy ¶4(b)(ii)’s requirement of preventing a Complainant from reflecting its mark in a domain name has not been satisfied. Therefore, the Panel declines to find a pattern of bad faith registrations pursuant to Policy ¶4(b)(ii).
Complainant claims the <apiglobal.co> domain name disrupts Complainant’s business by directing users to Respondent’s website offering unrelated goods and services. When “[r]espondent registered a domain name confusingly similar to [c]omplainant's mark to divert Internet users to a competitor's website[, it] is a reasonable inference that [r]espondent's purpose of registration and use was to either disrupt or create confusion for [c]omplainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).” Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003). Respondent registered and is using <apiglobal.co> in bad faith under the Policy.
Complainant claims Respondent registered <apiglobal.co> with actual knowledge of Complainant and its rights to the API mark. This appears true to the Panel. In light of the fame and notoriety of Complainant's API mark in this industry, it is inconceivable Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the API mark. This constitutes bad faith registration and use of the <apiglobal.co> domain name. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002).
Respondent registered the <apiglobal.co> domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption, so it will stand.
The Panel finds Policy ¶4(a)(iii) satisfied regarding <apiglobal.co>.
Having established some of the three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED in part and DENIED in part.
Accordingly, it is Ordered the <apiglobal.co> domain name be TRANSFERRED from Respondent to Complainant. It is further Ordered the <apipipeline.com> and <apcltt.com> domain names REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, March 13, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page