Swagelok Company v. xie zhangfu / wuxi jiafu famenguanjian youxiangongsi
Claim Number: FA1411001588180
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, USA. Respondent is xie zhangfu / wuxi jiafu famenguanjian youxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <86swagelok.com>, registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the National Arbitration Forum received payment on November 3, 2014. The Complaint was submitted in both English and Chinese.
On November 9, 2014, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <86swagelok.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. dba dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. dba dns.com.cn 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 November 12, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@86swagelok.com. Also on November 12, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 8, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i. Complainant uses the SWAGELOK mark in connection with its business in the sales of fluid system products. Complainant owns the SWAGELOK mark through its trademark registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 3,195,261, registered January 7, 2006). Complainant’s rights are further demonstrated by Complainant’s trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 595,412, registered September 21, 1954).
ii. Complainant uses the SWAGELOK mark in connection with its business in the sales of fluid system products.
i. Policy ¶ 4(a)(i)
a) The <86swagelok.com> domain name is confusingly similar to Complainant’s SWAGELOK mark because Respondent has simply added the numbers “86” to the beginning of the mark.
ii. Policy ¶ 4(a)(ii)
a) Respondent lacks rights or legitimate interests in the disputed domain name.
b) Respondent is not commonly known by the <86swagelok.com> domain name. Respondent is neither licensed nor authorized to use the SWAGELOK mark.
c) Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
d) Respondent currently uses the disputed domain name to sell competing goods and services as Complainant.
iii. Policy ¶ 4(a)(iii)
a) Respondent uses the disputed domain name to compete with Complainant, which disrupts Complainant’s business.
b) Respondent uses the disputed domain name to attract confused Internet users to its own website for its own commercial gain.
c) Respondent uses the disputed domain name to pass itself off as Complainant.
a. Respondent uses Complainant’s logo in the banner of its own website.
b. Respondent references Complainant’s mark in the body of its website.
c. Respondent includes Complainant’s background information in the “About Us” and “About SWAGELOK company” sections.
d) Respondent has actual knowledge of Complainant’s rights in the SWAGELOK mark, due to the use of Complainant’s logo in its own website and the obvious connection between Respondent’s website and Complainant’s business.
B. Respondent
Respondent did not submit a Response in this proceeding. Respondent registered the disputed domain name on March 25, 2014.
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(e), 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 (Nat. Arb. 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 uses the SWAGELOK mark in connection with its business in the sales of fluid system products. Complainant claims to own the SWAGELOK mark through its trademark registrations with China’s SAIC (e.g., Reg. No. 3195261, registered January 7, 2006). Complainant argues that its rights in the SWAGELOK mark are further demonstrated through trademark registrations with the USPTO (e.g., Reg. No. 595,412, registered September 21, 1954). Complainant argues that such registrations are sufficient to establish rights in the SWAGELOK mark pursuant to Policy ¶ 4(a)(i) requirements. Complainant’s contention is supported by previous UDRP decision. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant’s SAIC and USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <86swagelok.com> domain name is confusingly similar to Complainant’s SWAGELOK mark because Respondent has simply added the numbers “86” to the mark. The Panel also notes that the disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name differing from a mark by only the addition of numbers does not escape the realm of confusing similarity, and that that attachment of “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar);Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). As such, the Panel finds that the <86swagelok.com> domain name is confusingly similar to Complainant’s SWAGELOK mark under Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <86swagelok.com> domain name. The Panel notes that the WHOIS information identifies “Xie Zhangfu” as the registrant of the disputed domain name. Further, Complainant urges that Respondent is neither licensed nor authorized to use the SWAGELOK mark. The Panel recalls that Respondent has failed to submit a response to refute any of Complainant’s contentions. Given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <86swagelok.com> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant urges that Respondent uses the disputed domain name to offer goods and services that directly compete with Complainant. See Complainant’s Ex. 3. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used in a way that competes with the complainant. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”). Therefore, the Panel finds that Respondent’s competing use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
Complainant argues that Respondent uses the <86swagelok.com> domain name to sell goods and services to consumers that directly compete with Complainant. The Panel recalls that Complainant has submitted a screenshot of the website located at the disputed domain name that fortifies Complainant’s argument. See Complainant’s Ex. 3. Complainant asserts that such a use of the disputed domain name disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). Previous panels have agreed with this argument. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel agrees that Respondent’s current use of the disputed domain name disrupts Complainant’s business, and thus was used in a manner indicative of Policy ¶ 4(b)(iii) bad faith.
Complainant asserts that Respondent uses the disputed domain name in order to attract Internet users, who are seeking Complainant’s website, to Respondent’s own website for its own commercial gain. Previous panels have not hesitated to find bad faith where the respondent uses the disputed domain name to redirect Internet users to its own website for its own commercial gain. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Thus, the Panel finds that Respondent’s attempt to attract Internet users to its competing website for its own commercial gain qualifies as bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant makes the argument that Respondent uses the disputed domain name to pass itself off as Complainant. Specifically, Complainant asserts that Respondent uses Complainant’s logo in the top banner of the website, while also referencing it throughout the body of the website. See Complainant’s Ex. 3. Also, Complainant claims that Respondent uses Complainant’s background information in its “About Us” and “About SWAGELOK company” tabs on the website. Id. Complainant argues that all of this information compiled together allows Complainant to make the argument that Respondent is using the disputed domain name to impersonate and pass itself off as Complainant. Generally, when a respondent attempts to pass itself off as the complainant, panels have found bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Consequently, the Panel finds that Respondent’s attempt to pass itself off as Complainant constitutes bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the SWAGELOK mark when it registered the <86swagelok.com> domain name. Complainant supports this argument by noting that Respondent uses the SWAGELOK mark numerous places throughout its website. See Complainant’s Ex. 3. Additionally, Complainant asserts that there is an obvious connection between the content sold and advertised on Respondent’s website and Complainant’s business. Complainant believes that this information indicates that Respondent had actual knowledge of Complainant’s rights in the SWAGELOK mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers from the manner of the Respondent’s use of the disputed domain name that Respondent had actual knowledge of Complainant's SWAGELOK mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <86swagelok.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 18, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page