Solar Turbines Incorporated v. cunshuo zhang / Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1812001820508
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington DC, USA. Respondent is cunshuo zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <soalrturbines.com>, registered with GoDaddy.com, LLC; and <solarturbinas.com> and <solarturbins.com>, registered with NameSilo, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2018; the Forum received payment on December 12, 2018.
On December 12, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <solarturbinas.com> and <solarturbins.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. On December 14, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <soalrturbines.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and NameSilo, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and NameSilo, LLC registration agreements and have 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2019 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@soalrturbines.com, postmaster@solarturbinas.com, and postmaster@solarturbins.com. Also on December 21, 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 January 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 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 through its registration of the mark with the Maître Abu Ghazaleh Intellectual Property Office (e.g. Reg. No. 84,099, registered Jan. 14, 2012). Complainant has rights in the SOLAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,026,577, registered Dec. 9, 1975). Respondent’s <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names are confusingly similar to Complainant’s SOLAR TURBINES mark as they each contain a slight misspelling of the mark (transposing two letters, replace a letter, or omit a letter) and add the “.com” generic top-level domain (“gTLD”). Respondent’s domain names are confusingly similar to Complainant’s SOLAR mark as they each add the descriptive term “turbines” (or a slight misspelling of the term) and the “.com” gTLD.
Respondent has no rights or legitimate interests in the <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to commercially benefit from pay-per-click advertisements. Further, Respondent has engaged in typosquatting. Additionally, Respondent offers to sell the <soalrturbines.com> domain name on <sedo.com>.
Respondent registered and uses the <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names in bad faith. Respondent uses the domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant and its SOLAR TURBINES and SOLAR marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s pay-per-click websites. Such misdirection disrupts Complainant’s business. Further, Respondent engages in typosquatting. Additionally, Respondent is a serial cybersquatter with prior adverse UDRP decisions against it, and who also registered three domain names containing Complainant’s marks. Moreover, Respondent lists the <soalrturbines.com> domain name for sale on <sedo.com>. Finally, given Complainant’s fame and notoriety, along with Respondent’s registration of three nearly identical domain names, Respondent clearly had prior knowledge of Complainant’s rights in the SOLAR and/or SOLAR TURBINES marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names.
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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that 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 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 contends that the domain names all contain essentially identical wording, are used for essentially identical pay-per-click websites, and were registered at essentially the same time. Moreover, Complainant claims that the listed registrants, who have a history of cybersquatting as shown by their adverse UDRP decisions, previously targeted the same third-party mark, COACHELLA, in misspelled/typosquatted domain names that were the subject of prior adverse UDRP decisions.
The Panel finds from Complainants uncontested evidence and allegations that the domain names are commonly controlled by a single Respondent who is using multiple aliases. In this decision, the Respondents will be collectively referred to as “Respondent.”
Complainant claims rights in the SOLAR TURBINES mark through its registration of the mark with the Maître Abu Ghazaleh Intellectual Property Office (e.g. Reg. No. 84,099, registered Jan. 14, 2012), and claims rights in the SOLAR mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,026,577, registered Dec. 9, 1975). Registration of a mark with a governmental authority sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). The Panel finds that Complainant has established rights in both the SOLAR and SOLAR TURBINES marks for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names are confusingly similar to Complainant’s SOLAR TURBINES mark as they each contain a slight misspelling of the mark (transposing two letters, replace a letter, or omit a letter) and add the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel finds that the disputed domain names are confusingly similar to the SOLAR TURBINES mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names are confusingly similar to Complainant’s SOLAR mark as they each add the descriptive term “turbines” (or a slight misspelling of the term) and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). 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); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that the disputed domain names are confusingly similar to the SOLAR mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant for the <soalrturbines.com> domain name. The WHOIS identifies “Cunshuo Zhang” as the registrant for the <solarturbinas.com> and <solarturbins.com> domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the SOLAR or SOLAR TURBINES marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to registration, and Complainant has not given Respondent permission to use the marks for any purpose. The Panel agrees that Respondent is not commonly known by the at-issue domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the infringing domain names to commercially benefit from pay-per-click advertisements. Using a domain name to commercially benefit from hyperlinks generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots of the resolving webpages associated with the at-issue domain names, each of which display links such as “Solar Power Systems,” “Online Colleges,” and “Water Turbines.” The Panel finds that Respondent’s use of the domain names to offer pay-per-click hyperlinks fails to confer rights and legitimate interests in the domain names for the purposes of Policy ¶¶ 4(c)(i) or (iii). The Panel finds that Respondent lacks rights and legitimate interests in the domain names.
Complainant argues that Respondent has engaged in typosquatting. Registering a domain name containing common typing errors in a complainant’s mark can indicate a lack of rights and legitimate interests in a domain name under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). Here, Complainant claims the misspellings come in the form of either transposing letters in the case of the <soalrturbines.com> domain name; replacing one letter in the <solarturbinas.com> domain name; and omitting a letter in the <solarturbins.com> domain name. The Panel agrees that Respondent’s domain names are typosquatted versions of Complainant’s SOLAR TURBINES mark and finds that this as additional evidence of Respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii).
Complainant argues that Respondent offers to sell the <soalrturbines.com> domain name on <sedo.com>. Offering a confusingly similar domain name for sale can evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides a screenshot of the <sedo.com> page for the <soalrturbines.com> domain name, which lists a “Minimum offer” of “500 USD.” The Panel finds that Respondent offers the <soalrturbines.com> domain name for sale, which is evidence that it does not possess rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant claims that Respondent lists the <soalrturbines.com> domain name for sale on <sedo.com>. Offering a confusingly similar domain name for sale can evince bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As noted above, Complainant provides a screenshot of the <sedo.com> page for the <soalrturbines.com> domain name, which lists a “Minimum offer” of “500 USD.” The Panel finds Respondent’s offering of the domain name for sale is evidence of bad faith per Policy ¶ 4(b)(i).
Complainant contends that Respondent is a serial cybersquatter with prior adverse UDRP decisions against it, and who also registered three domain names containing Complainant’s marks. A complainant may use evidence of prior adverse UDRP decisions along with registration of multiple confusingly similar domain names against a respondent to evidence bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”); see also Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant provides case citations of prior UDRP cases against Respondent to further its argument. The Panel finds that Respondent’s history of registering confusingly similar domain names, along with Respondent’s registration of three confusingly similar domain names in the present case is evidence that Respondent registered and uses the disputed domain names in bad faith.
Complainant claims that Respondent disrupts Complainant’s business by using the domain names to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant and its SOLAR TURBINES and SOLAR marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s pay-per-click websites. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides screenshots of the resolving webpages associated with the at-issue domain names, each of which display links such as “Solar Power Systems,” “Online Colleges,” and “Water Turbines.” The Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant avers that Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant states that the misspellings come in the form of either transposing letters in the case of the <soalrturbines.com> domain name; replacing one letter in the <solarturbinas.com> domain name; and omitting a letter in the <solarturbins.com> domain name. The Panel agrees and finds that Respondent’s changes of Complainant’s mark in the domain names is typosquatting and demonstrates Respondent’s bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES and SOLAR marks at the time of registering the infringing domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent’s knowledge can be inferred given Complainant’s fame and notoriety, along with Respondent’s registration of three nearly identical domain names. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, and registers and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <soalrturbines.com>, <solarturbinas.com>, and <solarturbins.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 18, 2019
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