American Petroleum Institute v. Wayne Tooze / Blaze Concepts Ltd
Claim Number: FA2207002004584
Complainant is American Petroleum Institute (“Complainant”), represented by Kelli A. Ovies of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Wayne Tooze / Blaze Concepts Ltd (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <api6a-valve.com>, registered with Mesh Digital Limited.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2022; the Forum received payment on July 18, 2022.
On July 20, 2022, Mesh Digital Limited confirmed by e-mail to the Forum that the <api6a-valve.com> domain name is registered with Mesh Digital Limited and that Respondent is the current registrant of the name. Mesh Digital Limited has verified that Respondent is bound by the Mesh Digital Limited 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 July 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2022 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@api6a-valve.com. Also on July 21, 2022, 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.
On July 21, 2022 and July 29, 2022, the Forum received email correspondence from Respondent and its client, respectively.
Having determined that no response has been received from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, American Petroleum Institute, provides services in the oil and natural gas industry, including standards setting, research, and advocating for public policy that supports a strong U.S. oil and natural gas industry. Complainant has rights in the trademark API based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 840,642, registered Dec. 12, 1967). The <api6a-valve.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added a hyphen, a descriptive number-and-letter combination corresponding to one of Complainant’s standards, the descriptive word “valve”, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <api6a-valve.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s API mark.
Respondent has registered and uses the <api6a-valve.com> domain name in bad faith because Respondent uses the disputed domain name to attract users for commercial gain. In addition, Respondent had constructive knowledge of Complainant’s rights in the API mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on July 21, 2022, the Forum received an email from Wayne Tooze, Director of Blaze Concepts, stating that “My company, Blaze Concepts Ltd, is simply the web development company that registered the api6a-valve.com domain and built https://api6a-valve.com/ on the instruction of our client…” It goes on to name the client as “Edmund Valve Company (1965) Ltd” of South Wales, United Kingdom. The email concludes with the statement “Please contact the above domain owner with regards to this complaint.” On July 29, 2022, the Forum received an email from Adam Webb, Managing Director of Edmund Valve Company Ltd. on which Respondent was cc’d. This email states, in relevant part: “After reading the documentation I understand that the trademarks of API are to be respected, our intention of using the domain was as a way to market our products but under the circumstances we are prepared to surrender the domain to you or API. We are the owners of the domain and Blaze Concepts are merely our webhosts, please can you advise me of your protocol to conclude this matter asap.
Respondent has consented to a transfer of the disputed domain name to Complainant.
PRELIMINARY ISSUE: RESPONDENT’S CONSENT TO TRANSFER
The Forum received an email from Respondent after having served it with the Complainant at the same email address. In it, Respondent identifies the client for whom it registered the <api6a-valve.com> domain name and asks that the Forum contact this client which it refers to as the “domain owner”. The Forum subsequently received an email from Respondent’s client – on which Respondent was cc’d – who asserted ownership of the domain name and consented to voluntarily transfer the <api6a-valve.com>domain name to Complainant.
The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <api6a-valve.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
In light of the correspondence sent to the Forum by Respondent and its client, as noted above, the Panel has determined that it is not necessary to analyze the present case under the elements of the UDRP and it is ordered that the <api6a-valve.com> domain name be transferred to Complainant upon the Respondent’s voluntary consent.
The Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <api6a-valve.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 16, 2022
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