Solar Turbines Incorporated v. praneeth perna
Claim Number: FA1808001802569
Complainant is Solar Turbines Incorporated (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington DC, USA. Respondent is praneeth perna (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <solarturbinesinc.com> and <esolarturbines.com>, registered with GoDaddy.com, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 21, 2018; the Forum received payment on August 21, 2018.
On August 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <solarturbinesinc.com> and <esolarturbines.com> domain names (the “Domain Names”) are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 11, 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@solarturbinesinc.com and postmaster@esolarturbines.com. Also on August 22, 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 September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Paragraph 3(c) of 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.” The available evidence indicates that both of the Domain Names are registered by the same person or entity. The WHOIS report attached to the Complaint as Exhibit 1 confirms that both are registered to “praneeth perna,” and lists the same registrant address for both Domain Names. The Domain Names were registered eight days apart, one on July 26, 2018 and the other on August 2, 2018, and the web sites resolving from both of them are identical. On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them.
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 registered its SOLAR mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 1,026,577) on December 9, 1975 and its SOLAR TURBINES mark with the Algerian Abu-Ghazaleh Intellectual Property (“AGIP”) office (Reg. No. 84099) on January 14, 2012. Respondent’s Domain Names are identical or confusingly similar to Complainant’s marks as they incorporate both marks in their entirety, one differing only by adding to the SOLAR TURBINES mark the term “inc” and the “.com” generic top-level domain (“gTLD”), and the other by adding to that same mark the letter “e” and the “.com” gTLD,
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its marks in any way. Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, both Domain Names resolve to a GoDaddy parked webpage displaying generic advertisements, along with the message “Learn how you can get this domain,” suggesting Respondent’s intent to sell them for profit. These parked webpages may also be considered a passive holding, as Respondent fails to make any substantive use of the Domain Names.
Respondent registered and uses the Domain Names in bad faith. Respondent uses them to intentionally attract Internet users to the websites associated with them by creating a likelihood of confusion with Complainant and its SOLAR and SOLAR TURBINES marks as to the source, sponsorship, affiliation, or endorsement of its parked webpages. Such use disrupts Complainant’s business by competing with complainant for Internet traffic and interfering with Complainant’s ability to control the used of its marks. Further, by displaying the message “Learn how you can get this domain,” Respondent has indicated its intent to sell the domain names for profit. Further, Respondent has engaged in a pattern of bad faith as the Domain Names it has registered are confusingly similar to Complainant’s SOLAR TURBINES mark. Respondent’s use of the Domain Names for “parked” websites is analogous to non-use or passive holding of the domain names, which is evidence of bad faith. Finally, given Complainant’s long-term and worldwide use of its mark, Respondent clearly had actual knowledge when registering the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue herein.
Complainant registered its SOLAR mark with the USPTO (Reg. No. 1,026,577) on December 9, 1975 (See, Complaint Exhibit 10) and its SOLAR TURBINES mark with the Algerian Abu-Ghazaleh Intellectual Property (“AGIP”) office (Reg. No. 84099) on January 14, 2012 (See, Complaint Exhibit 9). Registration of a mark with a governmental authority is sufficient to establish 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)”).
Respondent’s Domain Names are confusingly similar to Complainant’s marks. They both incorporate Complainant’s SOLAR and SOLAR TURBINES marks in their entirety. One of the names adds to the SOLAR TURBINES mark the term “inc” and the “.com” gTLD, and the other adds to that same mark the letter “e” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Names from Complainant’s marks for the purposes of Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”), 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 may therefore find that the infringing domain names are confusingly similar to the SOLAR TURBINES mark under Policy ¶4(a)(i).
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Names, (ii) it is not affiliated with or authorized by Complainant to use Complainant’s marks in any way, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using the Domain Names to resolve to parked web sites does not demonstrate rights or legitimate interests in the Domain Names. These allegations are supported by competent evidence.
According to the WHOIS report submitted as Exhibit 1 to the Complaint, the registrant of both Domain Names is “praneeth perna.” This name bears no resemblance to the Domain Names. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it in any way, and that it has never licensed or authorized Respondent to use its SOLAR or SOLAR TURBINES marks in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (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).
Complaint Exhibit 11 contains screenshots of the web sites resolving from the Domain Names. They are identical. They bear the message “Learn how you can get this domain,” and advertise GoDaddy’s services as a broker. Using a confusingly similar domain name to display ads for services unrelated to those of a complainant does not constitute a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
Further, the parked webpages which resolve from the Domain Names are considered passive holdings, as Respondent fails to make any substantive use of them. Failing to make an active use of a confusingly similar domain name has often been held to evidence the absence of a bona fide offering of goods or services or a legitimate noncommercial or fair use for the purposes of Policy ¶¶ 4(c)(i) and 4(c)(iii). Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Finally, by causing the Domain Names to resolve to web sites that bear the message “Learn how you can get this domain,” Respondent indicates its intent to sell them. Offering to sell confusingly similar domain names has often been held to evidence a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). 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).”).
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Respondent registered and is using the Domain Names to attract Internet users to its web sites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web sites. The text on the sites resolving from the Domain Names is supplied by GoDaddy.com LLC (“GoDaddy”) and invites the visitor to contact GoDaddy if he or she is interested in purchasing the Domain Name. GoDaddy offers for a fee of $69.995 “+ commission” to attempt to negotiate a purchase from the registrant for “the lowest possible price.” See, Complaint Exhibit 11. There is no evidence what commercial gain, if any, Respondent receives from simply permitting the web sites to read as they do, but in the event either or both of the Domain Names were to be purchased by a third party, which is the apparent objective, Respondent would certainly receive commercial gain from the transaction. Even if no purchase is made through the web sites, GoDaddy is clearly seeking the value of its $69.99 “+ commission” from the web site to serve as broker, and the fact that GoDaddy stands to gain commercially from Respondent’s use of the Domain Name is sufficient grounds to support a finding that the element of “commercial gain” within the meaning of Policy ¶ 4(b)(iv) is present here. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s conduct in respect of these Domain Names thus falls within the circumstances articulated by Policy ¶ 4(b)(iv).
Secondly, by using the web sites Respondent has chosen for these Domain Names, it clearly demonstrates that it is offering them for sale for the highest price the market will bear, without regard to its out-of-pocket costs directly related to them. Notwithstanding GoDaddy’s representation that it will attempt to find a sale for “the lowest possible price,” Respondent’s conduct in this regard puts Respondent squarely within the circumstances articulated by ¶ 4(b)(i). 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).”).
Respondent’s use of the Domain Names for “parked” websites provided by GoDaddy is also analogous to non-use or passive holding of the Domain Names. The Policy acknowledges that mischief can manifest in many different forms and takes an open-ended non-exclusive approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and holding a confusingly similar domain name without making any substantive use of it has consistently been held to evidence bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, it is evident from Complainant’s world-wide standing and the close similarity between Complainant’s marks on the one hand and Respondent’s Domain Names on the other that Respondent had actual knowledge of Complainant’s SOLAR and SOLAR TURBINES marks in late July and early August, 2018, when it registered the Domain Names. See, Complaint Exhibit 1 for registration date. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <solarturbinesinc.com> and <esolarturbines.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 19, 2018
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