Solar Turbines Incorporated v. John / Mark Norred / OPJB / SBDGH / Mike Relf
Claim Number: FA2103001938249
Complainant is Solar Turbines Incorporated (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is John / Mark Norred / OPJB / SBDGH / Mike Relf (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com>, registered with Google LLC; Register.com, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2021; the Forum received payment on March 29, 2021.
On March 29, 2021; March 30, 2021, Google LLC; Register.com, Inc. confirmed by e-mail to the Forum that the <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names are registered with Google LLC; Register.com, Inc. and that Respondent is the current registrant of the names. Google LLC; Register.com, Inc. has verified that Respondent is bound by the Google LLC; Register.com, 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 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2021 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@solartourbines-inc.com, postmaster@solartourbines.com, postmaster@solarturbines-inc.com, postmaster@solarturbines-ltd.com, postmaster@solarturbines-lnc.com. Also on April 7, 2021, 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 April 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown 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. 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.
PRELIMINARY ISSUE : MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Complainant contends that all of the registrants are fake as shown by incorrect, incomplete, or misleading contact information. Complainant also notes that the domain names are constructed in similar manners, were registered recently and privately, four of the domain names were registered with the same registrar, and three of the domain names use the same email services.
Having regard to all of the foregoing matters, the Panel finds that the domain names are effectively controlled by a single Respondent who is using multiple aliases.
The proceeding may therefore go forward in its present form.
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 rights in the SOLAR TURBINES mark based upon the registration with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,332,695, registered Nov. 29, 2012). See Compl. Ex. 10. Respondent’s <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names are confusingly similar to Complainant’s SOLAR TURBINES mark because they each contain the mark in its entirety or misspelled, merely adding a hyphen, a generic abbreviation, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not authorized to use Complainant’s SOLAR TURBINES mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use because the domain names do not resolve to active webpages. Further, Respondent uses the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraudulent impersonation through email.
Respondent registered and uses the disputed domain names in bad faith. Respondent demonstrates a pattern of bad faith by registering multiple domain names incorporating the SOLAR TURBINES mark. Respondent also disrupts Complainant’s business for commercial gain by using the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraud. Additionally, Respondent’s nonuse of the domain names suggests bad faith. Finally, Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark when the disputed domain names were registered.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on April 13, 2021, the Forum received an email from a sender purporting to be a company whose address is 130 Glidden Rd, Brampton, ON, L6W 3M8,Canada, the address to which the Forum had sent the Written Notice of the Complaint herein in respect of the <solarturbines-lnc.com> domain name. The email stated, formal parts omitted, “We received a written notice of compliant today, however I assume you’ve sent this to the wrong address. Asahi Refining Canada is located at 130 Glidden Rd, Brampton, ON, L6W 3M8. I do not believe this compliant has anything to do with our company, please correct me if I’m wrong.”
1. Complainant is a United States company that is in the business of design and manufacture of industrial gas turbines and turbomachinery.
2. Complainant has established its trademark rights in the SOLAR TURBINES mark based upon the registration with the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 1,332,695, registered Nov. 29, 2012).
3. Respondent registered the <solarturbines-ltd.com> domain name on December 22, 2020, the <solarturbines-inc.com> domain name on January 5, 2021, the <solartourbines.com> domain name on February 3, 2021, and the <solarturbines-lnc.com> and <solartourbines-inc.com> domain names on March 17, 2021.
4. The disputed domain names do not resolve to active webpages and Respondent uses the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraudulent impersonation through email.
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 with the MIIP. 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. 29, 2012). See Compl. Ex. 10. Thus, the Panel finds that Complainant has rights in the SOLAR TURBINES mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SOLAR TURBINES mark. Complainant argues that Respondent’s <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names are confusingly similar to Complainant’s SOLAR TURBINES mark because they each contain the mark in its entirety or misspelled, merely adding a hyphen, a generic abbreviation, and the “.com” gTLD. Misspelling a mark by adding a letter is insufficient to negate confusing similarity under Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire BANK OF AMERICA mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Addition of hyphens and generic terms or abbreviations is also generally insufficient to negate confusing similarity between a disputed domain name and the mark it incorporates. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). The generic abbreviations Respondent adds to the disputed domain names are “lnc,” “inc,” and “ltd.” The Panel agrees with Complainant and finds that the disputed domain names are 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 names 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”).
(a) Respondent has chosen to take Complainant’s SOLAR TURBINES trademark and to use it in its domain names, making only minor spelling alterations and additions which do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <solarturbines-ltd.com> domain name on December 22, 2020, the <solarturbines-inc.com> domain name on January 5, 2021, the <solartourbines.com> domain name on February 3, 2021, and the <solarturbines-lnc.com> and <solartourbines-inc.com> domain names on March 17, 2021;
(c) The disputed domain names do not resolve to active webpages and Respondent uses the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraudulent impersonation through email;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names because Respondent is not authorized to use Complainant’s SOLAR TURBINES mark and is not commonly known by the disputed domain names. 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 the [<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 “John / Mark Norred / OPJB / SBDGH / Mike Relf” as the registrants 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 names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use because the domain names do not resolve to active webpages. Failure to make active use of a disputed domain name may suggest a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the error messages resolving at the disputed domain names. See Compl. Ex. 14. The Panel therefore agrees that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant submits Respondent uses the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraudulent impersonation through email. Use of a disputed domain name to impersonate a complainant for fraud or phishing is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides copies of emails sent from addresses associated with two of the disputed domain names in which Respondent impersonates Complainant in an attempt to divert payments from Complainant’s customers to Respondent’s own bank account. See Compl. Exs. 12 & 13. As the Panel agrees with Complainant, it finds that Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) or (iii).
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 names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names in bad faith because Respondent demonstrated a pattern of bad faith by registering multiple domain names incorporating the SOLAR TURBINES mark. Registration of multiple marks incorporating the same mark may suggest bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant notes that each of the five domain names in the present dispute incorporates the SOLAR TURBINES mark or a minor misspelling of it. Thus, the Panel finds bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent disrupts Complainant’s business for commercial gain by using the <solartourbines-inc.com> and <solartourbines.com> domain names in connection with fraud. Use of a disputed domain name to impersonate a complainant in furtherance of phishing or fraud may evidence bad faith per Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As noted above, Complainant provides copies of emails sent from addresses associated with two of the disputed domain names in which Respondent impersonates Complainant in an attempt to divert payments from Complainant’s customers to Respondent’s own bank account. See Compl. Exs. 12 & 13. Thus, the Panel agrees that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and/or (iv).
Thirdly, Complainant contends that Respondent’s nonuse of the domain names suggests bad faith. Failure to make active use of a disputed domain name may evidence bad faith per Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). Complainant provides screenshots of the error messages resolving at the disputed domains. See Compl. Ex. 14. The Panel therefore finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark when the disputed domain names were registered. Actual knowledge of a complainant’s rights in a mark evidences bad faith per Policy ¶ 4(a)(iii) and may be shown by the fame of the mark and the use a respondent makes of the mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Reapondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant submits it is indisputable that Respondent registered the domain names with knowledge of Complainant’s rights in the SOLAR TURBINES mark based upon the fame of the mark and Respondent’s use of the disputed domain names to impersonate Complainant and trade off Complainant’s goodwill. As the Panel agrees that actual knowledge is evident, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Finally, 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 names using the SOLAR TURBINES mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them 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 <solartourbines-inc.com>, <solartourbines.com>, <solarturbines-inc.com>, <solarturbines-ltd.com>, and <solarturbines-lnc.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 3, 2021
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