American Petroleum Institute v. Sakthivel Panneerselvam / Tanjai Quality Solutions Pte Ltd
Claim Number: FA2106001950018
Complainant is American Petroleum Institute (“Complainant”), represented by Jacob S. Wharton of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Sakthivel Panneerselvam / Tanjai Quality Solutions Pte Ltd (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <api510course.com>, <api570course.com>, and <api653course.com>, (‘the Domain Names’) 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2021; the Forum received payment on June 7, 2021.
On June 8, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <api510course.com>, <api570course.com>, and <api653course.com> 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 June 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 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@api510course.com, postmaster@api570course.com, postmaster@api653course.com. Also on June 10, 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 July 6, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark API registered, inter alia, in the USA for petroleum trade association services including educational services with first use recorded as 1924. It licenses organizations to provide training courses under its API mark. 510, 570 and 653 are numbers used by the Complainant for certain industrial certifications.
The Domain Names registered in 2019 are confusingly similar to the Complainant’s mark adding only the generic word ‘course’ and numbers that correspond to numbers used by the Complainant for industrial certifications and which do not prevent said confusing similarity.
The Respondent does not have rights or interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names have been used for competing education services using the Complainant’s mark as a masthead using a very similar logo to which the Complainant used to use which is confusing and suggests the courses offered at the Domain Names are associated with the Complainant when they are not and so there has been no bona fide offering of goods or services or legitimate noncommercial or fair use. Such use diverts and confuses Internet uses for commercial gain and disrupts the Complainant’s business and is indicative of bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark API registered, inter alia, in the USA for petroleum trade association services including educational services with first use recorded as 1924. It licenses organizations to provide training courses under its mark. 510, 570 and 653 are numbers used by the Complainant for certain industrial certifications
The Domain Names registered in 2019 are used for competing courses offered under the Complainant’s mark as a masthead using a logo similar to that which used to be used by the Complainant.
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 Domain Name in this Complaint combines the Complainant’s API mark (registered, inter alia in the USA for education related services with first use recorded as 1924) the numbers ‘510’, ‘570’ or ‘653’, the generic word ‘course’ and the gTLD “.com”.
The addition of numbers does not prevent confusing similarity between the Domain Name and the Complainant’s mark which is still recognizable in the Domain Name. See Twentieth Century Fox Film Corporation v. Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”). Accordingly the addition of ‘510’, ‘570’ or ‘653’ does not prevent confusing similarity between the Domain Name and the Complainant’ mark.
A generic term such as ‘course’ and a gTLD such as “.com” in a domain name do not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy 4(a)(i).).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial so cannot be legitimate noncommercial fair use.
The web sites attached to the Domain Names have been used for sites offering educational services using the Complainant's API mark in the masthead presented in a logo similar to one the Complainant used to use so that the Respondent’s sites could be taken to be official or authorized sites of the Complainant. The sites attached to the Domain Names did not make it clear that there was no commercial connection with the Complainant. The Panel finds this use was confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites was confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they used the Complainant’s mark as a masthead presented in a logo similar to that which the Complainant used to use and offered educational services relating to the Complainant’s certifications. The use of the Complainant’s certification numbers in the Domain Names shows the Respondent had actual knowledge of the Complainant and its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s web sites and services offered on them likely to disrupt the business of the Complainant. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <api510course.com>, <api570course.com>, and <api653course.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 6, 2021
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