APi Group, Inc. v. Stephen Moore / API Group Limited
Claim Number: FA2211002020567
Complainant is APi Group, Inc. (“Complainant”), represented by Timothy M. Kenny of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Stephen Moore / API Group Limited (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apigroup.com>, registered with Amazon Registrar, 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 Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 16, 2022; Forum received payment on November 16, 2022.
On November 21, 2022, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <apigroup.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, 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 November 23, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@apigroup.com. Also on November 23, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 operates in insulation contracting and distribution. Complainant has rights in the API GROUP mark through its common law rights developed in its use of the API GROUP mark in commerce. See Compl. Exhibit C. Respondent’s <apigroup.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the API GROUP mark in its entirety and adds the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <apigroup.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the API GROUP mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves an inactive webpage.
Respondent registered and uses the <apigroup.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the API GROUP mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates in insulation contracting and distribution and related goods and services.
2. Complainant has established its common law trademark and service mark rights in API GROUP and that it has held those rights since at least 1997.
3. Respondent registered the <apigroup.com> domain name on August 19, 2002.
4. Respondent has caused the disputed domain name to resolve to an inactive webpage.
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 has tendered in evidence a certificate of registration of the service mark API GROUP with the United States Patent and Trademark Office (“USPTO”) on April 19, 2022 , registered in the name of Complainant. This would normally satisfy the requirement under the Policy that Complainant must show that it has a relevant trademark or service mark, as it is necessary for it to show only that it has such a trademark or service mark at the time the Complaint was filed, which it has done.
However, when it comes to assessing the other requirements of the Policy, it is appropriate to note that the disputed domain name was registered before Complainant acquired its service mark rights by the use of the mark. Accordingly, it would be wise to inquire if Complainant also has any other trademark or service mark rights.
In that regard, Complainant has submitted that in addition to its registered service mark, it also has common law or unregistered rights in the API GROUP mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning, meaning that as well as its primary meaning, the claimed mark has another or secondary meaning that identifies the complainant as the provider of the relevant goods and services. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
In support of its submission that it has a common law trademark or service mark for API GROUP, Complainant points to its use of the mark in commerce since 1997. The way in which Complainant presents this information in the Amended Complaint is, formal parts omitted, as follows:
“The APi GROUP Marks are inherently distinctive. Complainant commenced use of the API mark at least as early as 1926 in connection with offering insulation contracting and distribution services. Complainant has continuously used the API mark in commerce in the United States, expanding into the construction industry and construction-related industries starting in 1980. Since then, Complainant has continued to use the API mark in connection with increasingly diversified service offerings, and particularly in the field of safety and specialty services. In 1997, Complainant became APi Group and began using the APi GROUP mark in the U.S. and, more recently, throughout the world.
Today, Complainant operates through dozens of company subsidiaries and from more than 500 locations around the world, including the U.S., Canada, Europe, Asia, and Australia. … Complainant also actively promotes its APi GROUP Marks on social media, … By virtue of its use of the APi GROUP Marks for nearly 60 years, the APi GROUP Marks have gained extensive recognition among consumers, and Complainant has acquired valuable trademark rights therein.”
This submission has been verified by Complainant’s authorised representative as being complete and accurate. The Panel therefore accepts it as unchallenged evidence that Complainant acquired common law trademark or service mark rights in API GROUP in 1997 or prior to that year and, hence, that it has used the mark since then and that it has been recognised at least since 1997 as having a secondary meaning that identifies Complainant as the provider of the goods and services covered by the mark.
The Panel therefore finds that Complainant has established that it has common law rights in the API GROUP mark for the purposes of Policy ¶ 4(a)(i) and that it has had them since at least 1997.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s API GROUP mark. Complainant argues Respondent’s <apigroup.com> domain name is identical or confusingly similar to Complainant’s API GROUP mark as it contains the mark in its entirety and merely adds the “.com” gTLD. The addition of a generic or descriptive phrase or a gTLD fails to distinguish a disputed domain name sufficiently from a mark and does not negate a finding that a domain name is identical or confusingly similar to a trademark or service per Policy ¶ 4(a)(i) which it is in the present case. The only change from the trademark to the domain name is that the mark uses a lower case letter ”i”, making the domain named virtually identical to the trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is identical and/or confusingly similar to Complainant’s mark per 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 API GROUP trademark and to use it in its domain name;
(b) Respondent registered the disputed domain name on August 19, 2002;
(c) Respondent has caused the disputed domain name to resolve to an inactive webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights or legitimate interests in the <apigroup.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the API GROUP mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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 information for the disputed domain name lists the registrant as “Stephen Moore,” and there is no other evidence to suggest that Respondent was authorized to use the API GROUP mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to a blank page. Where the Respondent inactively holds a domain name, it is open to the Panel to find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use 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).”). Here, Complainant provides evidence of the disputed domain name resolving to an inactive webpage. See Compl. Exhibit H. Therefore, the Panel finds that Respondent fails to use the disputed domain name actively for a bona fide offering of goods or services or legitimate noncommercial or fair use under 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 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, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary evidence considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
In that regard, Complainant argues that Respondent’s inactive holding of the <apigroup.com> domain name is evidence of bad faith registration and use. Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sep. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”). As previously noted, Complainant provides evidence that the disputed domain name resolves to an inactive webpage. See Compl. Exhibit H. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent had knowledge of Complainant’s rights in the API GROUP mark at the time of registering the <apigroup.com> domain name. Prior UDRP cases generally decline to find bad faith as a result of constructive knowledge. 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.”). The Panel may however determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations as well as its commercial presence and reputation. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s rights in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii) which the Panel now makes.
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 API GROUP 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 <apigroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: December 22, 2022
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