Solar Turbines Incorporated v. Thomas Boys / zaza plc / nally micheal / zaza plc
Claim Number: FA1801001769295
Complainant is Solar Turbines Incorporated (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Thomas Boys / zaza plc / nally micheal / zaza plc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <solartrubines.com> and <solarturbnies.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; Web4Africa Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2018; the Forum received payment on January 29, 2018.
On January 30, 2018 and February 6, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com and Web4Africa Inc. confirmed by e-mail to the Forum that the <solartrubines.com> and <solarturbnies.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Web4Africa Inc. and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com; Web4Africa Inc. has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; Web4Africa Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2018 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@solartrubines.com, postmaster@solarturbnies.com. Also on February 7, 2018, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in SOLAR and SOLAR TURBINES and alleges that the disputed domain names are confusingly similar to its SOLAR TURBINES trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademarks SOLAR and SOLAR TURBINES in connection with the manufacture and sale of industrial gas turbines;
2. Complainant is the owner, inter alia, of United States Patent and Trademark Office (“USPTO”) Reg. No. 1,026,577, registered December 9,1975 for the mark SOLAR and Mexican Institute of Industrial Property (“MIIP”) Reg. No. 1,332,695, registered November 29, 2012 for the mark SOLAR TURBINES;
3. the disputed domain name <solartrubines.com> was created on December 4, 2017 and the <solarturbnies.com> domain name was created on December 6, 2017;
4. WHOIS records list Nally Micheal as the registrant of the <solartrubines.com> domain name and Thomas Boys as the registrant for the <solarturbnies.com> domain name;
5. neither domain name resolves to a website or online location;
6. the disputed domain name <solartrubines.com> was used to send a fraudulent email which posed as originating from Complainant, soliciting payment of funds; and
7. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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."
Preliminary procedural issue: Multiple respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the domain name holders are either aliases for one person or entity, or are effectively controlled by the one person or entity. In support thereof, Complainant refers to the fact Zaza plc is listed as the registrant organization for both domain names. In the absence of a Response and given the close timing in the creation of the two domain names the Panel finds that, for the purposes of paragraph 3(c) of the Rules, the disputed domain names were registered by the one entity. Hereinafter, the term “Respondent” is used to refer collectively to the registrants of the disputed domain names.
Primary Issues
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.
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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [ii] Complainant provides evidence of its trademark registration for SOLAR TURBINES (the “Trademark”) with MIIP and the Panel finds that it has trademark rights in that expression. Complainant relies essentially on its rights in the Trademark and for the purposes of this decision reference to rights in the SOLAR mark is unnecessary.
The disputed domain names make trivial misspellings of the Trademark. The misspellings do not create another word or words which might be said to avoid confusion. Further, the addition of a gTLDs to a trademark is generally inconsequential and insufficient to differentiate a disputed domain from the original mark. That is certainly the case here. The Panel finds the disputed domain names to be confusingly similar to the Trademark since the Trademark remains the distinctive part of the domain names. [iii]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS does not provide any prima facie evidence that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names. There has been no use of the domain names in relation to any website. Further, the evidence is that the Respondent has used the disputed domain name <solartrubines.com> in an email to a third party which attempts to pass itself off as coming from Complainant. Panel finds that Complainant has made a prima facie case. [v]
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
In spite of Complainant’s contrary submissions, the Panel finds no scope for the application of paragraph 4(b)(ii) above. Complainant could barely wish to register a misspelt iteration of the Trademark as a domain name, not least since as the evidence shows it has already registered a correctly spelt version from which it conducts business.
Further, there being no websites resolving from the disputed domain names, it cannot be said that the parties are competitors for the purposes of paragraph 4(b)(iii) above.
For far as paragraph 4(b)(iv) is concerned, again, neither domain name has been used in connection with a website or other online location. However, the disputed domain name <solartrubines.com> was used to send a fraudulent email which posed as originating from Complainant, soliciting payment of funds. It appears the solicitation was for a payment via an online facility created by Respondent and so the Panel is prepared, in principle, to apply paragraph 4(b)(iv) to the domain name <solartrubines.com>. In other respects the Panel finds that the provision has been met. The disputed domain name is confusingly similar to the Trademark and the intention of the resulting confusion was commercial gain.[vi] Accordingly, the Panel finds registration and use of the domain name <solartrubines.com> in bad faith pursuant to paragraph 4(b)(iv).
The wholly unused domain name <solarturbnies.com> presents some difficulty. The Complaint’s indirect attempt to shoehorn it’s treatment into paragraph 4(b)(ii) is misguided for the reason already given. It must be looked at separately from the paragraph 4(b) scenarios and bad faith registration and bad faith use shown.
The Panel has already found that paragraph 3(c) of the Rules is satisfied and that the disputed domain names were more likely than not to have been registered by the one person or entity. Since a single mind lies behind their creation and since the bad faith use of the domain name <solartrubines.com> is manifest, it can be inferred that the domain name <solarturbnies.com> was also registered in bad faith. Nonetheless, it would be quite something else to infer that the bad faith use of <solartrubines.com> infects <solarturbnies.com> with bad faith use. Rather, the Panel takes note of the evidence provided in the Complaint that the Trademark has been used for 20 years and that goods bearing the Trademark have been sold and used in over 100 countries around the world. Although the evidence falls short of showing that the Trademark is “famous” as that word has been generally understood in trademark law, the Panel is in this case prepared to rely on the rationale behind the case of Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) and find that there is no readily comprehensible way in which the <solarturbnies.com> domain name could be used in good faith. In line with that reasoning the Panel so finds passive holding in 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 <solartrubines.com> and <solarturbnies.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: March 5, 2018
[i] See, for example, 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); 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.”).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (FORUM Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”; Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (FORUM Jul. 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”. Here, Complainant alleges that Respondent used the <solartrubines.com> domain name as part of an email phishing scheme designed to deceive Complainant’s customers into sending payment to Respondent under the false belief that Respondent was Complainant or an employee of Complainant; see also Nokia Corp. v. Eagle, FA 1125685 (FORUM Feb. 7, 2008); DaVita Inc. v. Cynthia Rochelo, FA 1738034 (FORUM July 20, 2017).
[vi] See, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (FORUM Jul. 13, 2011) finding that use of the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use.
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