Solar Turbines Incorporated v. MehrWert Business Group / Daniela Steinke
Claim Number: FA2001001879075
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H Bald of Kelly IP, LLP, United States. Respondent is MehrWert Business Group / Daniela Steinke (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solaerturbine.com>, registered with 1&1 IONOS SE.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2020; the Forum received payment on January 15, 2020. The Complaint was submitted in both German and English.
On January 9, 2020, 1&1 IONOS SE confirmed by e-mail to the Forum that the <solaerturbine.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@solaerturbine.com. Also on January 20, 2020, 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 February 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Solar Turbines Incorporated, is in the business of design and manufacture of industrial gas turbines and turbomachinery. Complainant has common law trademark rights in the SOLAR TURBINES mark based on many years use of that expression. Complainant also has registered trademark rights in the SOLAR TURBINES mark based upon its international registrations including its registration with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,332,695, registered Nov. 29, 2012). See Compl. Ex. 9. Respondent’s <solaerturbine.com> domain name is identical and/or confusingly similar to Complainant’s mark because it is a trivial misspelling created by adding and removing letters and adding a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <solaerturbine.com> domain name. Respondent is not licensed or authorized to use Complainant’s SOLAR TURBINES mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to display pay-per-click links to various commercial websites. Also, Respondent’s typosquatting activities provide further evidence that Respondent lacks rights and legitimate interests in the domain name.
Respondent registered and uses the <solaerturbine.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain. Additionally, Respondent’s domain name registration constitutes typosquatting. Further, Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in German, thereby making the language of the proceedings to be German.
The Panel has reviewed the applicable rules on language of the proceedings under the UDRP.
Having done so, and Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in the English language.
1. Complainant is a United States company engaged in the business of design and manufacture of industrial gas turbines and turbomachinery.
2. Complainant has established its registered trademark rights in the SOLAR TURBINES mark based upon the registration of the mark with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,332,695, registered Nov. 29, 2012) and other international registrations.
3. Complainant has also established its common law trademark rights in the SOLAR TURBINES mark.
4. Respondent registered the disputed domain name on December 3, 2018.
5. Respondent has engaged in typosquatteing and has caused the disputed domain name to resolve to a website which displays pay-per-click links to various commercial websites .
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SOLAR TURBINES mark based upon the registration of the mark with the MIIP and other international registrations and also its common law rights. Registration of a mark with a governmental trademark agency is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Solar Turbines Incorporated v. Thomas Boys / zaza plc / nally micheal / zaza plc, FA 1769295 (Forum Mar. 5, 2018) (“Complainant provides evidence of its trademark registration for SOLAR TURBINES with MIIP and the Panel finds that it has trademark rights in that expression.”). Complainant provides evidence of registration of the SOLAR TURBINES mark with the MIIP (e.g., Reg. No. 1,332,695, registered Nov. 24, 2011) and other international registrations which the Panel accepts. See Compl. Ex. 9. Thus, the Panel finds that Complainant has rights in the SOLAR TURBINES mark under Policy ¶ 4(a)(i). Complainant has also established its common law trademark rights in SOLAR TURBINES based on its many years use of that expression in its business and evidence of that use that the Panel accepts.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SOLAR TURBINES mark. Respondent’s <solaerturbine.com> domain name is identical and/or confusingly similar to Complainant’s mark because it is a trivial misspelling of the mark created by adding and removing letters and adding a gTLD. Addition and subtraction of letters from a registered mark may not negate confusing similarity between the mark and a disputed domain name per Policy ¶ 4(a)(i). See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.); see also Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Complainant argues that the SOLAR TURBINES mark remains distinctive in the disputed domain name after the removal of the letter “s” and the additions of the letter “e” and the “.com” gTLD. The Panel agrees with Complainant and finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SOLAR TURBINES trademark and to use it in its domain name, making a trivial misspelling of the mark by adding and removing letters, which do not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on December 3, 2018;
(c) Respondent has engaged in typosquatteing and has caused the disputed domain name to resolve to a website which displays pay-per-click links to various commercial websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <solaerturbine.com> domain name and is not affiliated with Complainant or authorized to use Complainant’s SOLAR TURBINES mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of[<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “MehrWert Business Group” as the registrant and no information suggests that Complainant has authorized Respondent to use the SOLAR TURBINES mark in any way. See Compl. Ex. 1. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, but rather uses the domain to display pay-per-click links to various commercial websites. Use of a disputed domain name to host hyperlinks is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides a screenshot of the resolving webpage and the hyperlinks present on the page. See Compl. Ex. 11. Therefore, the Panel finds that Respondent is not using the domain name for 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).
(g) Complainant also argues that Respondent’s typosquatting activities provide further evidence that Respondent lacks rights and legitimate interests in the domain name. Typosquatting may demonstrate a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Complainant argues that Respondent’s misspelling of the SOLAR TURBINES mark for use in the <solaerturbine.com> domain name constitutes typosquatting. As the Panel agrees, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <solaerturbine.com> domain name in bad faith by redirecting users to Respondent’s own website for commercial gain while disrupting Complainant’s business in the process. Use of a disputed domain name to display pay-per-click hyperlinks relating to competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel notes that Complainant provides screenshots of Respondent’s website and Complainant notes the similarity between the links and Complainant’s business. See Compl. Ex. 11. Therefore, the Panel may find bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Additionally, Complainant argues that Respondent’s domain name registration constitutes typosquatting. Typosquatting may act as independent evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s misspelling of the SOLAR TURBINES mark for use in the <solaerturbine.com> domain name constitutes typosquatting. As the Panel agrees, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark when the domain name was registered. While constructive notice of a complainant’s rights in a mark is insufficient to show bad faith, actual notice can be evidence of bad faith registration and use. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant notes that Respondent must have actual knowledge of Complainant’s rights in the mark due to the fame and long-term use of the mark as well as the fact that disputed domain name is a typosquatted version of the mark. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SOLAR TURBINES mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solaerturbine.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 13, 2020
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