Lufkin Industries, LLC v. Steve Marco
Claim Number: FA2009001915192
Complainant is Lufkin Industries, LLC (“Complainant”), represented by Giulio E. Yaquinto of Pirkey Barber PLLC, Texas, USA. Respondent is Steve Marco (“Respondent”), represented by Mark Mireles, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufkingears.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M., Wallace, QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2020; the Forum received payment on September 29, 2020.
On September 30, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lufkingears.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@lufkingears.com. Also on October 2, 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.
A timely Response was received and determined to be complete on October 26, 2020.
On November 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, QC. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts:
1. Complainant manufactures industrial gears in connection with the oil and gas industry. Complainant has rights in the LUFKIN mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) including Registration No. 1,914,529, registered Aug. 29, 1995. Respondent’s <lufkingears.com> domain name is confusingly similar to Complainant’s mark because Respondent merely adds the generic term “gears” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the <lufkingears.com> domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is passively holding the disputed domain name.
3. Respondent registered and uses the <lufkingears.com> domain name in bad faith. Specifically, Respondent is attempting to sell the disputed domain name. Additionally, Respondent has an established history of bad faith registrations due to Respondent’s ownership of other domain names that infringe on other famous marks. Furthermore, Respondent is holding the disputed domain name in an inactive state.
B. Respondent
Respondent asserts:
1. Respondent is an entrepreneur who is deeply connected with the town of Lufkin, Texas. Respondent plans to use the disputed domain name to showcase hiking and camping in and around Lufkin, Texas. Respondent has been planning this blog for 2 years.
2. Respondent has legitimate rights to the disputed domain name because:
a. Respondent has an extensive Portfolio of Domain Names that are geared toward various entrepreneurial business ventures he is engaged in.
b. Respondent has plans to use the disputed main name for his venture into blogging about camping, hiking gear and the many hiking trails located in Lufkin TX and east Texas as well as the rich history of Lufkin Texas. Plans for this website and content are currently underway and have been for two years. Respondent is not claiming to be Lufkin Company nor is he engaging in a similar business as Lufkin using the name that is in dispute.
c. Respondent is currently working on making a name for himself under the domain at issue with no intent for commercial gain to misleadingly divert customers or tarnish the trademark or service mark.
d. Plans are in progress to make noncommercial use of this domain name and do not plan to offer services for LUFKIN branded products.
3. Respondent did not register the disputed domain name in bad faith because:
a. The domain name Respondent registered is not <lufkin.com>. It is <lufkingears.com>. Respondent is not attempting to compete with this company.
b. The domain is inactive as Respondent undergoes plans to set up his blogging site. Respondent is involved in hundreds of websites and has plans to activate this domain when the site and content creation is complete with no ill-intent to disrupt the services of the Complainant.
c. As to the alleged allegations of cybersquatting, these claims are false. Respondent holds various domains that are inactive waiting and undergoing plans for non-commercial use.
d. Respondent has never intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web as Respondents Blogging website is not event set up at the moment and the domain name is inactive.
1. Complainant has established rights in the LUFKIN mark. The disputed domain name is confusingly similar to the LUFKIN mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name.
3. Respondent has registered and is using 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.
Complainant has demonstrated rights in the LUFKIN mark through its registration of the mark with the USPTO (including Registration No. 1,914,529, registered Aug. 29, 1995). This registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the LUFKIN mark under Policy ¶ 4(a)(i).
Complainant has also established that Respondent’s <lufkingears.com> domain name is confusingly similar to Complainant’s mark because Respondent merely adds the generic term “gears” and the “.com” gTLD to Complainant’s mark. Adding a generic word and a gTLD to a complainant may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds Respondent’s <lufkingears.com> domain name (the “disputed domain name”) to be confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii) Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then 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”).
Complainant has made out the prima facie case. Complainant has established prima facie that Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS of record identifies Respondent as “Steve Marco” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Complainant has established prima facie that Respondent has no rights or legitimate interests in the <lufkingears.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant having made a prima facie case, the burden shifts to Respondent to show it has rights or legitimate interests. Respondent has not established any right or legitimate interest. Respondent claims he holds domain names geared toward various entrepreneurial business ventures, but provides no evidence of such ventures to support this bare assertion.
Complainant argues that Respondent fails to use the <lufkingears.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent inactively holds the disputed domain name. Passively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Respondent admits the disputed domain name is inactive and says he has plans to use the disputed domain name for a venture into blogging about camping, hiking gear and hiking trails and that the plans have been underway for two years. Respondent does not, however, provide any evidence to support this bare assertion. Respondent’s evidence consists of an easily mocked up page design for the alleged blogging website. There is no evidence before the Panel as to when this page was created nor is there any evidence at all of Respondent’s claimed intention to set up a blogging site. Neither is there any evidence that Respondent is currently working on making a name for himself under the disputed domain name with no intent for commercial gain or that plans are in progress to make noncommercial use of this domain name. As against that, Complainant has established that Respondent holds numerous other domain names and that Respondent has advertised the disputed domain name for sale for USD $300,000. Respondent has failed to establish any right or legitimate interest in the disputed domain name.
Complainant provides a screenshot of a domain name resale page, showing the disputed domain name listed for a price of USD $300,000. Complainant has demonstrated that Respondent is attempting to sell the disputed domain name. Generally, offering a disputed domain name up for sale can be evidence of bad faith under Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).
Respondent has not explained why he holds domain names containing famous trademarks. He has not explained why, on the one hand he claims he is setting up a non-commercial blogging site while on the other he advertises the disputed domain name for sale for USD $300,000. Therefore, the Panel finds Respondent registered and uses the <lufkingears.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant also provides the results of a reverse domain search of the Respondent’s listed email address, showing the email is connected with numerous domain names, some of which contain famous trademarks owned by third parties. Complainant argues this shows Respondent has an established history of bad faith registrations due to Respondent’s ownership of other domain names that infringe on famous marks. A respondent may be found to have established a pattern of bad faith registrations when the respondent registers numerous domain names that incorporate other trademarks under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Respondent suggests he is involved in hundreds of websites and holds various domains that are inactive waiting and undergoing plans for non-commercial use. Respondent provides no evidence to substantiate this bare claim. The Panel finds Respondent also has registered and uses the <lufkingears.com> domain name in bad faith under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lufkingears.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, QC Panelist
Dated: November 4, 2020
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