DECISION

 

Industrial Bolting Technologies, Inc. v. Antony Crofts

Claim Number: FA2312002075514

 

PARTIES

Complainant is Industrial Bolting Technologies, Inc. ("Complainant"), represented by John L. Welsh of WELSH FLAXMAN & GITLER LLC, Virginia, USA. Respondent is Antony Crofts ("Respondent"), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <torsionx-sg.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 15, 2023; Forum received payment on December 15, 2023.

 

On December 18, 2023, GoDaddy.com, LLC confirmed by email to Forum that the <torsionx-sg.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 December 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@torsionx-sg.com. Also on December 18, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 January 8, 2024.

 

On January 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant manufactures and sells hydraulic torque tools under the TORSIONX mark. Complainant owns United States trademark registrations for TORSIONX in standard character form and for a design mark that includes TORSIONX as the most prominent textual component. Complainant entered into a distribution agreement with Respondent in February 2018, under which Respondent was permitted to use Complainant's mark. That agreement was terminated in November 2023. Complainant states that its November 2023 notice terminated Respondent's right to use Complainant's mark in connection with the sale or rental of hydraulic torque tools.

 

Respondent registered the disputed domain name <torsionx-sg.com> in August 2017. The Panel infers that the domain name was registered in anticipation of the parties' 2018 distribution agreement or possibly a predecessor agreement. The domain name resolves to a website that displays Complainant's TORSIONX mark and logo and promotes hydraulic torque tools and related products and services.

 

Complainant contends on the above grounds that the disputed domain name <torsionx-sg.com> is confusingly similar to its TORSIONX mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

The Response identifies Respondent as "TorsionX Pte Ltd – Represented By Antony Crofts." Respondent is working on a rebranding and apparently intends to cease usage of the TORSIONX mark. Respondent denies having acted in bad faith in regard to the <torsionx-sg.com> domain name, and notes that the website at <torsionx-sg.com> has not been updated since 2021.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has not proved that the disputed domain name was registered and is being used in bad faith. The Panel declines to enter a finding as to whether Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The disputed domain name <torsionx-sg.com> incorporates Complainant's registered TORSIONX trademark, adding a hyphen, the geographical abbreviation "SG," and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Expedia, Inc., Orbitz, LLC, Travelscape, LLC, & HomeAway.com, Inc. v. 林 凡 / 雪 林, FA 2021004 (Forum Dec. 27, 2022) (finding <travelocity-sg.com> confusingly similar to TRAVELOCITY); Morgan Stanley v. Wang Zhong Zhou / Nan Jing Zhi Tu Qi Ye Guan Li You Xian Gong Si, FA 1925465 (Forum Jan. 13, 2021) (finding <morganstanley-sg.com> confusingly similar to MORGAN STANLEY). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

In light of the Panel's dispositive finding on the issue of registration and use in bad faith, the Panel declines to address the question of rights or legitimate interests.

 

Registration and Use in Bad Faith

The third element set forth in paragraph 4(a) of the Policy requires Complainant to show that the disputed domain name was registered and is being used in bad faith. These requirements are conjunctive; both registration and use in bad faith must be proved. See, e.g., Sage Global Services Ltd. v. Narendra Ghimire, Deep Vision Architects, DAI2023-0010 (WIPO Sept. 1, 2023); Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group,LLC, FA 2048379 (Forum Aug. 2, 2023); Melinda French Gates v. John Clendenon, FA 2003541 (Forum Oct. 2, 2022).

 

The evidence presented indicates that Respondent initially registered the disputed domain name for legitimate business purposes and with Complainant's consent, either express (though neither party has provided a copy of the distribution agreement) or implied (based upon Complainant's characterization of that agreement and the parties' subsequent conduct). The Panel therefore finds that Complainant has not proved that the domain name was registered in bad faith. See, e.g., AF Gloenco, Inc. v. CT PACKAGING SYSTEMS, INC., FA 1785831 (Forum June 28, 2018) (declining to find bad faith where respondent was a long-time authorized distributor of complainant's products and used the disputed domain name with complainant's implied consent); Turbonetics, Inc. v Performance Techniques, FA 96318 (Forum Feb. 21, 2001) (declining to find bad faith where respondent had been an authorized distributor of complainant's goods for more than ten years). As the requirement of registration and use in bad faith is conjunctive, the Complaint fails on this ground.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <torsionx-sg.com> domain name REMAIN WITH Respondent.

 

 

 

David E. Sorkin, Panelist

Dated: January 10, 2024