Swagelok Company v. Karimi SoftWare
Claim Number: FA1904001839353
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, United States. Respondent is Karimi SoftWare (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parsswagelok.com>, registered with Tucows Domains Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2019; the Forum received payment on April 18, 2019.
On April 18, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <parsswagelok.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 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@parsswagelok.com. Also on April 19, 2019, 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 May 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an industry leader in the development, manufacturing, and distribution of quality fluid system products under the SWAGELOK mark. Complainant has rights in the SWAGELOK mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 595,412, registered on September 21, 1954). See Compl. Annex 5. The <parsswagelok.com> domain name is identical or confusingly similar to the SWAGELOK mark as it incorporates the mark in its entirety and merely adds the geographic prefix of “pars” (referring both to the province of “Pars” in Iran, and to the country of Iran in general) and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <parsswagelok.com> domain name because Respondent is not permitted or otherwise authorized to use Complainant’s SWAGELOK mark, nor is Respondent commonly known by the disputed domain name. Furthermore, Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services. Instead, Respondent uses the <parsswagelok.com> domain name to pass off as Complainant in order to purport to sell Complainant’s products for commercial gain.
Respondent registered and used the disputed domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant to disrupt Complainant’s business and to purport to sell Complainant’s products for commercial gain. Respondent also has actual knowledge of the SWAGELOK mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on January 23, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name, <parsswagelok.com>, is confusingly similar to Complainant’s valid and subsisting trademark, SWAGELOK. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “pars,” which apparently relates on a region in Iran or Iran in general, and the gTLD “.com” to Complainant’s trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’ trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Furthermore, Respondent has not used the domain name in good faith and in connection with a bona fide offering of goods or services. Instead, Respondent uses the disputed domain name to pass itself off as Complainant in order to purport to sell Complainant’s products for commercial gain.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently uses the disputed domain name to pass itself off as Complainant to disrupt Complainant’s business and to purport to sell Complainant’s products for commercial gain. Previous panels have found bad faith where the respondent used the infringing domain name to pass off as a complainant to disrupt complainant’s business and to purport to sell a complainant’s products for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which claims it is an “importer” of Complainant’s goods and purports to sell products, using a number of images and/or catalogs that are owned by the Complainant. See Compl. Annex 36. Therefore, the Panel finds that Respondent registered and used the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that based on Respondent’s selection and use of the SWAGELOK mark, it is inconceivable that Respondent could have registered the <parsswagelok.com> domain name without actual knowledge of Complainant's rights in the mark. Given the distinctive nature of Complainant’s trademark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to its trademark.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of 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 <parsswagelok.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 14, 2019
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