DECISION
Beemer Precision, Inc. v. MR. MITUL SHAH - PARTNER / BEARING & BUSH CO.
Claim Number: FA2402002082412
PARTIES
Complainant is Beemer Precision, Inc. ("Complainant"), represented by Bruce A. Herald of Bruce Alan Herald PC, Pennsylvania, USA. Respondent is MR. MITUL SHAH - PARTNER / BEARING & BUSH CO. ("Respondent"), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oilitebushes.com> and <oiliteproduct.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com and eNom, 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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 5, 2024. Forum received payment on February 5, 2024.
On February 5, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com and eNom, LLC confirmed by e-mail to Forum that the <oilitebushes.com> and <oiliteproduct.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and eNom, LLC and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com and eNom, LLC have verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com and eNom, LLC registration agreements 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 February 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2024 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@oilitebushes.com, postmaster@oiliteproduct.com. Also on February 7, 2024, 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 February 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant, Beemer Precision, Inc., manufactures and sells, under the trademark OILITE, self-lubricating sintered metal bearings in the shapes of sleeves, flanged cylinders, washers and plates, using bronze, iron and other metals. Self-lubricating bearings are made by pressing powdered bronze or iron into the shape of a bearing, sintering the bearing, and impregnating it with a lubricant. Complainant owns the domain name <oilite.com> and numerous derivations.
Complainant has rights in the OILITE mark through trademark registrations in several countries, including with the United States Patent and Trademark Office ("USPTO") and in India. Respondent's <oilitebushes.com> and <oiliteproduct.com> domain names are confusingly similar to Complainant's OILITE mark.
Respondent lacks rights or legitimate interests in the <oilitebushes.com> and <oiliteproduct.com> domain names since Respondent is not licensed or authorized to use Complainant's OILITE mark and there is no evidence to suggest that Respondent is commonly known by those names. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, through the websites to which the domain names resolve, Respondent sells self-lubricating sintered metal bearings which it describes as "Oilite Bushes", "Sintered Bronze Bushes", "Sintered Iron Bushes", and "Iron Sintered Self Lubricated Bushes". Respondent uses the domain names to sell counterfeit "Oilite" bearings, which it designates as "bushings." The terms "bearings" and "bushings" are synonymous. The products that Respondent offers for sale are identical or similar to Complainant's OILITE bearings. Respondent's <oilitebushes.com> web site prominently displays Complainant's trademark.
Respondent registered the <oilitebushes.com> and <oiliteproduct.com> domain names in bad faith with actual knowledge of Complainant's rights in the OILITE mark and uses them in bad faith to deceptively suggest that it manufactures and sells OILITE bearings. Both websites list the same address in Mumbai as Respondent's place of business. The premises at that address are incapable of accommodating the large furnace, presses and gas tank required to manufacture sintered bearings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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 as 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').
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the OILITE mark through registrations in several countries, including with the USPTO (e.g., Reg. No. 1,777,650, registered on June 22, 1993) and in India (Reg. No. 2916596, registered on July 26, 2019) for self-lubricating metal bearings for use in machinery. The Panel finds Respondent's <oilitebushes.com> and <oiliteproduct.com> domain names to be confusingly similar to Complainant's mark, only differing by the addition of the descriptive words "bushes" or "product", which, far from distinguishing the domain names from the mark, represent that any website to which they resolve belongs to Complainant. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <oilitebushes.com> and <oiliteproduct.com> domain names were registered on August 10, 2010 and March 14, 2008 respectively, many years after Complainant registered its United States OILITE mark. Both domain names resolve to websites purporting to offer for sale sintered bushes and parts of the kind manufactured and sold by Complainant. The <oilitebushes.com> website promotes "Oilite Bushes/Sintered Bronze Bushes & Parts" and claims that Respondent Bearing & Bush Co. is "Manufacturer of Oilite Bushes". The <oiliteproduct.com> website does not display Complainant's OILITE mark.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <oilitebushes.com> and <oiliteproduct.com> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's OILITE mark when Respondent registered the <oilitebushes.com> and <oiliteproduct.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oilitebushes.com> and <oiliteproduct.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: February 29, 2024
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