Swagelok Company v. yeywen
Claim Number: FA1411001588182
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, USA. Respondent is yeywen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <swagelokgroup.com> and <swagelokgroup.mobi>, registered with Xin Net Technology Corporation.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2014; the Complaint was submitted in both Chinese and English. The National Arbitration Forum received payment on November 3, 2014.
On November 3, 2014, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <swagelokgroup.com> and <swagelokgroup.mobi> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 5, 2014, the Forum served the Chinese Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 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@swagelokgroup.com, postmaster@swagelokgroup.mobi. Also on November 5, 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 3, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
A. Complainant
i. 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) and 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 advanced and innovative fluid system products.
i. Policy ¶ 4(a)(i)
1. The disputed domain names are confusingly similar to Complainant’s SWAGELOK mark, because Respondent has simply added the generic term “group” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain names.
2. Respondent is not commonly known by the disputed domain names. Respondent is not authorized to use the SWAGELOK marks and there is absolutely no relationship, association, connection, or sponsorship between the two companies.
iii. Policy ¶ 4(a)(iii)
1. Respondent has engaged in a pattern of bad faith as demonstrated by the two domain names presently in dispute.
2. Respondent is disrupting Complainant’s business.
3. Respondent’s use of the disputed domain is bad faith in that unsuspecting Internet users will be confused as to the source, sponsorship, association, approval, connection or relationship between Respondent and Complainant.
4. Respondent did not make an active use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Swagelok Company of Solon, OH, USA. Complainant is the owner of domestic and international registrations for the mark SWAGELOK which it has used continuously since at least as early as 1954 in connection with its provision of goods and services related to fluid system products.
Respondent is Yeywen of Guangdong Sheng, China. Respondent’s registrar’s address is listed as Beijing, China. Respondent registered the disputed domain names on or about April 15, 2014.
Panel Note: Language of the Proceedings
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 may be conducted in English.
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 advanced and innovative fluid system products. Complainant claims to own the SWAGELOK mark through its trademark registrations with the SAIC (e.g., Reg. No. 3,195,261, registered January 7, 2006) and 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 argument is supported by previous UDRP decisions. See Nervous Tattoo, Inc. v. qiu xianzheng, FA 1296071 (Nat. Arb. Forum Jan. 18, 2010) (finding that the complainant established rights under Policy ¶ 4(a)(i) by demonstrating that it owned a trademark registration with China’s SAIC). The Panel here finds that Complainant’s SAIC and USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s SWAGELOK mark because Respondent has simply added the generic term “group” to both of the disputed domain names. The Panel notes that the disputed domain names differ from the SWAGELOK mark by the affixation of the generic top-level domains (“gTLD”) “.com” and “.mobi.” Previous panels have generally found that a domain name differing from a mark by only the addition of a single generic term does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”). The Panel here finds that Respondent’s disputed domain names are confusingly similar to Complainant’s SWAGELOK mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name and asserts that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information identifies “Yeywen” as the registrant of the disputed domain name. Further, Complainant states that Respondent is not authorized to use the SWAGELOK mark, and denies any relationship, association, approval, connection, or sponsorship with Respondent. Respondent has failed to submit a response to refute any of Complainant’s contentions. The Panel here finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Further Respondent is not making an active use of the disputed domain names, which Complainant posits in its Policy ¶ 4(a)(iii) allegations. Prior panels have held that a respondent that does not make an active use of the disputed domain name is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel here finds that Respondent has not provided a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent is disrupting Complainant’s business. Specifically, Complainant contends that unknowing and unsuspecting Internet users will be directed to Respondent’s disputed domain names and may be confused as to the relationship between the disputed domain names and Complainant. However, Complainant fails to provide evidence that Respondent is using the disputed domain names to compete with Complainant.
Complainant asserts that Respondent has failed to make an active use of the disputed domain names. The Panel again notes that Complainant submitted evidence demonstrating Respondent’s failure to make an active use of the disputed domain names. Prior panel decisions have held that the failure to make an active use of a disputed domain names qualifies as bad faith under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel here finds that Respondent has failed to make an active use of the disputed domain names and thus is acting in bad faith under Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <swagelokgroup.com> and <swagelokgroup.mobi> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 18, 2014
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