DECISION

 

Solar Turbines Incorporated v. Frank anderson

Claim Number: FA2402002084395

PARTIES

Complainant is Solar Turbines Incorporated ("Complainant"), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Frank anderson ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <solarturbinnes.com>, registered with PSI-USA, Inc. dba Domain Robot.

 

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.

 

        Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 19, 2024; Forum received payment on February 19, 2024.

 

On February 20, 2024, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to Forum that the <solarturbinnes.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@solarturbinnes.com. Also on February 20, 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 March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in SOLAR and SOLAR TURBINES. Complainant holds national registrations for those trademarks.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.       Complainant makes and sells industrial gas turbines and turbomachinery for use in the oil, gas and power generation industries by reference to the trademarks, SOLAR and SOLAR TURBINES;

 

2.       Complainant is the owner of, inter alia, Mexican (IMPI) Trademark Reg. No. 1,332,695, registered from November 29, 2012, for SOLAR TURBINES; and

 

3.       the disputed domain name was registered on November 14, 2023, and has not been used.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

For the purposes of these proceedings, it has only been necessary for the Panel to consider trademark rights in SOLAR TURBINES. Complainant asserts both registered and unregistered trademark rights in SOLAR TURBINES. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark SOLAR TURBINES with the Mexican national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by duplication of the letter "N" in the word "TURBINES". The alteration is trivial; visually, it is barely noticeable, and aurally, the terms are identical.  The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Solar Turbines v. Ogunade, FA1810001811640 (Forum Nov. 11, 2018) finding disputed domain name <solarsturbines.com> confusingly similar to SOLAR TURBINES; Caterpillar Inc. v. Ukolen, FA1903001835991 (Forum April 30, 2019) finding <catterpillar.com> confusingly similar to the complainant's CATERPILLAR mark).

 

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. Finally, the domain name is not in use, resolving to a webpage displaying the message: "This site can't be reached".

 

It follows that a prima facie case has been made that Respondent has no rights or interest in the domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017): "Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!").

 

The onus shifts to Respondent. In the absence of a Response, the Panel finds that Respondent has not discharged the onus and finds the Respondent has no rights or interests.

 

Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

The Complaint submits that Respondent's behaviour falls under subparagraphs 4(b)(iii) and (iv), above. With regard to subparagraph 4(b)(iii), there is, as acknowledged, no evidence of use of the disputed domain name and therefore nothing on which to base a finding that the parties are competitors. With regard to subparagraph 4(b)(iv), there is no evidence of use for commercial gain and no reasonable inference to be drawn of commercial gain.

 

Without explicitly referencing subparagraph 4(b)(ii), the Complaint uses its language and cites one case (Altamira Material Solutions GP, LLC v. frank Anderson, FA2310002068821 (Forum Nov. 22, 2023)) but the Panel is reluctant to characterise this as a "pattern", or necessarily find that the disputed domain name prevents Complainant from reflecting the trademark "in a corresponding domain name". It is difficult to envisage that Complainant would seek to register or use the disputed domain name.

 

The Panel finds nothing to support the application of any of the paragraph 4(b) scenarios in this case. Accordingly, the Complaint must establish, as separate matters, registration in bad faith and use in bad faith.

 

The Complaint states that by reason of:

 

"use of … SOLAR TURBINES … worldwide for many decades, its extensive advertisement and promotion … and its tremendous commercial success, … SOLAR TURBINES … [has] long been internationally well-known in the oil and gas and power generation industries…"

…

 

Complainant owns strong common-law trademark rights in … SOLAR TURBINES … based on Complainant's extensive and continuous use … for decades and the tremendous commercial success of the products and services Complainant offers…"

 

There is no evidence of those assertions but there are a number of uncontradicted statements in the Complaint including (a) use of SOLAR TURBINES since the 1970s; (b) Complainant's products and services being offered under the trademark in North America, South America, Europe, Asia, Australia, the Middle East and Africa; (c) use of Solar Turbines' units in more than 100 countries with more than 3 billion operating hours.

 

Absent a Response, the Panel shall 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 the Complaint. The Panel accepts that Complainant and its trademark are well-known (at least in the United States).

 

In these circumstances, the Panel draws the reasonable inference that the domain name was registered in bad faith. Albeit that the trademark is composed of relatively non-distinctive elements, there is nothing to suggest that Respondent could have a legitimate expectation to use them in a good faith, nominative, manner. If the Panel is wrong in this regard, it would have expected to see a Response.

 

The Panel treats the residual issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: "what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?", concluding that "the question can only be answered in respect of the particular facts of a specific case", whereafter he paid regard to circumstances showing that (i) the complainant's trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights.

 

All of those considerations are satisfied.  Following the Telstra Corporation Limited v. Nuclear Marshmallows case, the Panel finds passive holding and "use" in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <solarturbinnes.com> domain name be TRANSFERRED from Respondent to Complainant

 

 

Debrett G. Lyons, Panelist, Panelist

Dated: March 13, 2024