Solar Turbines Incorporated v. Dan Borah / Webcore One
Claim Number: FA1404001552145
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Christopher P. Foley of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA. Respondent is Dan Borah / Webcore One (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solarturbineparts.com>, registered with FastDomain Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil-Jiménez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2014; the National Arbitration Forum received payment on April 1, 2014.
On April 2, 2014, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <solarturbineparts.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 April 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2014 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@solarturbineparts.com. Also on April 3, 2014, 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.
A timely Response was received and determined to be complete on April 23, 2014.
An Additional Submission was timely filed, on April 28, 2014. However, the respective payment was not timely made inasmuch as it was received on April 29, 2014, and therefore this submission does not comply with Supplemental Rule #7. Notwithstanding this fact, and since it is permitted, the Panel has decided to consider the information contained in the Additional Submission in as much as it does contribute to demonstrate the allegations made by the Complainant in the case.
On April 1st, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil-Jiménez as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that Solar Turbines Incorporated is a world leader in designing, manufacturing, and servicing industrial gas turbines and turbomachinery systems for use in the oil and gas industry, as well as in the power generation industry, such as gas turbine generator sets. Furthermore, Complainant states that Solar Turbines also offers services relating to gas turbine and gas compressor overhaul, parts replacement, field service, package refurbishment, and asset management in connection with its SOLAR name and mark. In addition, Solar has used the SOLAR mark in connection with various marine applications, including high-speed marine propulsion (where gas turbines are used in large high-speed luxury ferries).
Moreover, the Complaint states that Respondent registered the Domain Name on May 20, 2011, more than sixty years after Solar Turbines began using the SOLAR mark, long after the effective date of Solar Turbines trademark registration, and several decades after the SOLAR mark became famous for gas turbine products and services, and that Respondent uses the Domain Name to promote that Respondent has a large inventory of Solar gas turbine parts available, even “hard to find” parts.
Based on the foregoing assertions, Complainant claims that the domain <solarturbineparts.com> is confusingly similar to Complainant’s well-known and federally registered trademark SOLAR for gas turbines, that Respondent does not have any rights or a legitimate interest in the Domain Name because it trades on the goodwill of Complainant’s SOLAR mark, and Respondent’s use of said mark is unauthorized.
B. Respondent
Respondent claims that the <solarturbineparts.com> domain name has in no way harmed or infringed upon any trademark claim by Complainant. Respondent informs the Panel that the United States Patent and Trademark Office list 4,480 records with companies claiming “Solar” as their trademark, and in addition the “Solar Turbine” trademark was abandoned June 19, 2012 and SOLAR TURBINE has also expired.
Respondent also asserts that the <solarturbineparts.com> domain name in no way has given any information that leads the public to believe that Respondent is selling or providing “genuine” Solar parts or parts manufactured by Solar. Respondent states that the <solarturbineparts.com> domain name provides “aftermarket” or OEM Equivalent parts made by independent manufacturers designed to fit Solar Gas Turbines and complete used Solar turbine packages for sale by their current owners.
In addition, Respondent states that there is no exhibit of any customer being harmed or confused by any wording or any meaning projected by the <solarturbineparts.com> domain name, and at the beginning of the first page of the website states: “We are not affiliated with CAT, CATERPILLAR or its subsidiary Solar Turbines. ”
Furthermore, Respondent informs the Panel that Dan Borah/WebCore One is a web hosting reseller for <hostcentric.com>, and Dan Borah/WebCore One does not operate the <solarturbineparts.com> domain name for profit, nor does he/it operate for profit <siemensgasturbineparts.com> or <westinghouseturbineparts.com>. According to Respondent, these websites are being attended to by Nicole Samaha, widow of a United States Army Veteran. Respondent explains that her husband operated the websites up until his death at the end of December 2013.
The Panel notes that Respondent begins his defense by requesting that all documents concerning the present case be sent to him in order to turn them over to The Federal Trade Commission and the US Department of Justice. Respondent states that the documents must reach him by May 14, 2014, otherwise the complaint to the United States Government Agencies will go forward with the behavior of FORUM and Complainant.
C. Additional Submissions
In its Additional Submission, Complainant states that Respondent’s assertions regarding the fact that the <solarturbineparts.com> domain name has not given any information to lead the public to believe that Respondent is selling or providing “‘genuine Solar parts or parts manufactured by Solar” are contradictory and misleading because Respondent’s <solarturbineparts.com> domain name clearly indicates that Respondent claims to offer SOLAR branded parts, and therefore if Respondent is now claiming that he only sells non-SOLAR branded parts, then the statements made on his website are false and misleading to consumers in as much as Respondent claims on his website to be selling SOLAR-branded parts - but in reality sells private label or OEM parts instead - then its representations are false, and Respondent is clearly using the Domain Name in bad faith to mislead consumers as to the source of the products it offers.
In its Additional Submission, Complainant also argues that by Respondent’s own admission, Respondent is using a Domain Name that reflects Complainant’s SOLAR mark to sell non-SOLAR products. As noted in Complainant’s initial Complaint, Respondent’s website also features products marketed from other manufacturers such as Siemens and Westinghouse. Respondent acknowledges that the Domain Name is being used to market and promote products by manufactures or sellers other than Complainant. As such, Complainant asserts that Respondent fails to rebut Complainant’s statement regarding the use and registration in the Domain Name in bad faith.
Lastly, Complainant refers to Respondent’s statement regarding the fact that Complainant’s UDRP complaint is an effort to prevent small businesses from trading in aftermarket parts. Complainant asserts that it has no interest in preventing businesses from making lawful sales of after-market or OEM parts and equipment, but to do so it cannot permit third-party businesses like Respondent to use its SOLAR trademark. Complainant adds that it cannot allow its trademarks to be used to lead consumers to believe that they are buying SOLAR parts or equipment (or any other branded products) when they are not. Therefore, Complainant respectfully requests that the Panel find the Domain Name to have been registered and used in bad faith, and that the Domain Name be transferred to Complainant.
Complainant is the owner of the trademark SOLAR, as it is evidenced with the printout of the information contained on the website of the United States Patent and Trademark Office regarding Solar Turbines Incorporated’s U.S. federal registration, which demonstrates that the trademark SOLAR was first used in 1950, and registered on December 9, 1975.
The Panel therefore finds that with such registration Complainant has established rights in the mark SOLAR under Policy ¶ 4(a)(i) regardless of the location of Respondent. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
The Panel also finds that the addition of the generic words “turbine” and “parts” to the registered trademark SOLAR does not contribute to establish a difference between said domain and the SOLAR trademark, registered and claimed to be well known. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). On the contrary, taking into consideration that in the present case the Claimant’s commercial name is Solar Turbines [Incorporated], the fact that the domain name consists of the words “solarturbineparts” establishes or suggests a link between the domain and the Complainant, which may lead to the assumption that the owner of the <solarturbineparts.com> domain name is the company Solar Turbines Incorporated.
In turn, Respondent contends that the <solarturbineparts.com> domain name has in no way harmed or infringed any trademark owned by Complainant, and to support this statement Respondent informs the Panel that the United States Patent and Trademark Office lists 4,480 records with companies claiming “Solar” as their trademark. The Panel notes that a trademark search may disclose several trademarks containing a specific name because indeed, it is more than frequent that a name, or trademarks containing a name, be registered by different owners but always to cover different goods and/or services. However, a trademark cannot be registered by different parties to cover the exact same products or services because the risk of confusion for consumers should be avoided. Therefore, the Respondent’s statement in connection with the trademark does not disprove the Complainant’s right over the trademark SOLAR.
Moreover, Respondent argues that the <solarturbineparts.com> domain name in no way has given any information to lead the public to believe that Respondent is selling or providing “genuine” Solar parts or parts manufactured by Solar. Respondent claims it provides “aftermarket” or OEM Equivalent parts made by independent manufacturers designed to fit Solar Gas Turbines and complete used Solar turbine packages for sale by their current owners. In this concern, the Panel finds that Complainant demonstrated that the Respondent does mention on the website that SOLAR-branded parts are being sold, so this fact contradicts Respondent’s assertion as to the fact that the <solarturbineparts.com> domain name has not provided information to lead the public to believe that Respondent is selling or providing “genuine” Solar parts or parts manufactured by Solar.
Lastly, as to Respondent’s request to provide him the documentation relating to the present case in order for him send said documents to The Federal Trade Commission and the US Department of Justice, Panel directs Respondent’s attention to the fact that all the documentation regarding the case was provided to him when he was given notice of the Complaint. But furthermore, Respondent should be reminded that the registration of domain names is governed by specific regulations which are made known to applicants at the moment a domain name is registered, when they are required to submit to a mandatory administrative proceeding in the event that a third party (a Complainant) asserts that the applicant’s domain name:
(i) is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the applicant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In light of the foregoing, Respondent’s threat to submit a complaint to the United States Government Agencies for the behavior of FORUM and Complainant is totally out of place.
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated that it is the exclusive owner of the trademark SOLAR in connection with gas turbines. Moreover, it was demonstrated that the domain name <solarturbineparts.com> is used to promote the sale of Solar gas turbine parts, which means that not only the domain name contains the SOLAR trademark owned by the claimant, but also the trademark SOLAR is used on the Respondent´s website (see Exhibit 4 of the Amended Complaint annex).
The similarities between the trademark SOLAR and the domain <solarturbineparts.com> are undeniable. In fact the domain name totally reproduces the registered trademark SOLAR and also resembles the commercial name of the owner thereof (Solar Turbines), a fact that no doubt may lead to believe that the <solarturbineparts.com> domain name belongs to Solar Turbines Incorporated. It is evident for the Panel that the domain is likely to be viewed as incorporating the SOLAR trademark by visitors to Respondent’s website, a circumstance that no doubt may lead consumers to erroneously believe either that the website <solarturbineparts.com> belongs to Complainant, or that there is a business association between Complainant and Respondent.
In light of the foregoing, there is no doubt for the Panel that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <solarturbineparts.com> is confusingly similar to the trademark SOLAR owned by Complainant.
According to the Policy, the owner of a given domain name may demonstrate that he has rights or legitimate interest thereon by demonstrating
(i) before any notice of the dispute, its 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) that the Respondent has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The evidence submitted in the present case does demonstrate that the website <solarturbineparts.com> is not used in connection with a bona fide offering of goods or services, in as much it includes the usage of a registered trademark owned by a third party and ends leading the public to confusion. Moreover, there is no evidence as regards the fact that Respondent has been commonly known by the domain name, and on the contrary, there is evidence that demonstrates that the trademark SOLAR is owned by a company named Solar Turbines Incorporated, which is confusingly similar to the disputed domain name. And lastly, the evidence submitted demonstrates that the information contained on the website <solarturbineparts.com> misleadingly diverts consumers by announcing that “Solar Turbine Parts.com has a large inventory of Solar gas turbine parts available. We have Solar gas turbine parts available from and for all models of Solar gas turbines. We have “hard to find” Solar gas turbine parts available. We have Solar gas turbine parts for older model Solar gas turbines. We have Solar gas turbine parts for Solar heavy duty gas turbines. We have Solar gas turbine parts available for Solar small heavy duty gas turbines. Also available are Solar gas turbine parts for Solar Commercial gas turbines units. And Solar gas turbine parts are available for Solar trailer mounted gas turbines.” The presence of the SOLAR trademark in the domain name and on the website is definitely not innocent, and misleads.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <solarturbineparts.com>.
As mentioned before, the fact that the disputed domain name is used to offer SOLAR gas turbine parts as demonstrated with the evidence submitted by the Complainant clearly indicates that Respondent’s use of the disputed domain name does not constitute 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).
The Panel considers, after a thorough review of the documentation and evidence submitted to support the case, that Respondent’s registration and use of the Domain Name to advertise on a website products that directly compete with the products covered by the SOLAR trademark does not constitute a bona fide offering of goods or services under the Policy. Indeed, among ICANN’s Uniform Domain Name Dispute Resolution Policy the attempt to attract, for commercial gain, Internet users to a web site 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 a product or service on a certain website or location is considered as evidence of registration and use in bad faith, and this is exactly what happens in the present case.
In light of the foregoing, the Panel considers that the Policy requirement in Paragraph 4(a)(iii) is met since it has been demonstrated with evidence submitted to the case that the domain solarturbineparts.com was registered and is used 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 <solarturbineparts.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jiménez Panelist
Dated: May 12, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page