Solar Turbines Incorporated v. LINCOLN C. ALCIDE / westindiespetroleum
Claim Number: FA1805001789386
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is LINCOLN C. ALCIDE / westindiespetroleum (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solarturbinesworldwide.com>, registered with Google 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On May 31, 2018, Google LLC confirmed by e-mail to the Forum that the <solarturbinesworldwide.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@solarturbinesworldwide.com. Also on June 6, 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 June 28, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Solar Turbines Incorporated, is one of the world’s leading designers and manufacturers of industrial gas turbines and turbomachinery packages for use in the oil and gas and power generation industries. Complainant has rights in the SOLAR TURBINES mark (e.g. Reg. No. 1,332,695, registered Nov. 29, 2012) based upon its registration of the mark with the Mexican Institute of Industrial Property (“MIIP”) and in the SOLAR mark (e.g. Reg. No. 1,026,577, registered Dec. 9, 1975) based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
2. Respondent’s <solarturbinesworldwide.com>[i] domain name is confusingly similar to Complainant’s SOLAR TURBINES mark as it incorporates the mark in its entirety and merely adds the generic and/or descriptive term “worldwide” and the “.com” generic top-level domain name (“gTLD”). The domain name is also confusingly similar to Complainant’s SOLAR mark as in incorporates the mark in its entirety and adds the generic and/or descriptive terms “turbines” and “worldwide” and the “.com” gTLD.
3. Respondent has no rights or legitimate interests in the <solarturbinesworldwide.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or licensed Respondent to use the SOLAR TURBINES or SOLAR marks in any manner. Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the domain name.
4. Respondent registered and is using the <solarturbinesworldwide.com> domain name in bad faith. Respondent disrupts Complainant’s business and intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Additionally, Respondent failed to make an active use of the domain name.
5. Further, Respondent registered the domain name with false and/or misleading WHOIS contact information. Last, Respondent clearly had actual or constructive knowledge of Complainant and Complainant’s rights in the SOLAR TURBINES and SOLAR marks prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SOLAR TURBINES and SOLAR marks. Respondent’s domain name is confusingly similar to Complainant’s SOLAR TURBINES and SOLAR marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <solarturbinesworldwide.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(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.”).
Complainant has rights in the SOLAR TURBINES mark (e.g. Reg. No. 1,332,695, registered Nov. 29, 2012) based upon its registration of the mark with the MIIP and has rights in the SOLAR mark (e.g. Reg. No. 1,026,577, registered Dec. 9, 1975) based upon its registration of the mark with the USPTO. Registration of a mark with MIIP and/or USPTO is sufficient to establish rights in that mark. See Daniel Jesus Chavez Moran and Desarrollo Marina Vallarta, S.A. DE C.V. v. MIGUEL PENA, FA 1735344 (Forum July 24, 2017) (finding that complainant had rights in a mark which it had registered with the Mexican Institute of Industrial Property); see also Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Therefore, Complainant’s registrations of the SOLAR TURBINES and the SOLAR marks with the MIIP and USPTO, respectively, are sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <solarturbinesworldwide.com> domain name is confusingly similar to Complainant’s SOLAR TURBINES mark as it incorporates the mark in its entirety and merely adds the generic and/or descriptive term “worldwide” and the “.com” gTLD. Complainant also contends that the domain name is confusingly similar to Complainant’s SOLAR mark as it incorporates the mark in its entirety and adds the generic and/or descriptive terms “turbines” and “worldwide” and the “.com” gTLD. Additions of generic and/or descriptive terms and a gTLD to a complainant’s mark are not sufficient to distinguish a domain name from an incorporated mark under a Policy ¶ 4(a)(i) analysis. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). The Panel holds that the <solarturbinesworldwide.com> domain name is confusingly similar to the SOLAR TURBINES and SOLAR marks per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <solarturbinesworldwide.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <solarturbinesworldwide.com> domain name, as Respondent is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information for the <solarturbinesworldwide.com> domain name lists the registrant as “LINCOLN C. ALCIDE / westindiespetroleum,” and no information in the record indicates that Respondent is authorized to use the SOLAR TURBINES and/or SOLAR marks. Therefore, Respondent is not commonly known by the <solarturbinesworldwide.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent’s lack of rights or legitimate interests in the <solarturbinesworldwide.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant has shown that Respondent fails to make an active use of the domain name. The inactive holding of a domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides screenshots of the resolving website which is an inactive page with the words “Hmm. We’re having trouble finding that site. Therefore, Respondent does not have the rights or legitimate interests in the <solarturbinesworldwide.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s bad faith is indicated by its use of the <solarturbinesworldwide.com> domain name to disrupt Complainant’s business by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name to disrupt a Complainant’s business and/or attract users for commercial gain can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Complainant contends Respondent unfairly disrupts Complainant’s business by interfering with Complainant’s ability to control the use of its registered SOLAR TURBINES and SOLAR marks. Further, Complainant claims Respondent redirects users seeking Complainant’s business to Respondent’s resolving website and Respondent may profit from this confusion. The Panel agrees and finds that Respondent has registered and is using the <solarturbinesworldwide.com> domain name in bad faith per Policy ¶ 4(b)(iii).
Additionally, Complainant claims Respondent’s failure to make active use at the <solarturbinesworldwide.com> domain name also demonstrates bad faith. Failure to use a domain name may indicate that a respondent registered and is using it in bad faith under Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Therefore, the Panel holds that Respondent’s inactive holding of the <solarturbinesworldwide.com> domain name is evidence of bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES and SOLAR marks. Actual knowledge of a complainant’s rights in a mark may indicate bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Complainant contends that given its long term and worldwide use of the SOLAR and SOLAR TURBINES mark, its prior registration of the <solarturbines.com> domain name, and Respondent’s use of the marks, it is apparent that Respondent had actual knowledge of Complainant’s rights in the marks when Respondent registered the <solarturbinesworldwide.com> domain name. The Panel agrees and finds that Respondent did have actual knowledge of Complainant’s rights in the SOLAR and SOLAR TURBINES marks and this demonstrates bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solarturbinesworldwide.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 10, 2018
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