DECISION

 

American Petroleum Institute v. zhao / reanod

Claim Number: FA2409002116587

 

PARTIES

Complainant is American Petroleum Institute ("Complainant"), represented by Kelli A. Ovies of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is zhao / reanod ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <apimeivalve.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 20, 2024; Forum received payment on September 20, 2024.

 

On September 21, 2024, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <apimeivalve.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 24, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@apimeivalve.com. Also on September 24, 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 October 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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 is the largest U.S. trade association for the oil and natural gas industry. API's mission is to promote safety across the industry globally and to influence public policy in support of a strong, viable U.S. oil and natural gas industry. Its chief functions include advocacy, research, standards setting, and certification. Additionally, API permits manufacturers of equipment that confirms to applicable API specifications to apply the API Monogram Mark to such equipment through its API Monogram Licensing Program. Complainant owns numerous registrations for API and API- formative trademarks in the United States and throughout the world, including United States Patent and Trademark Office ("USPTO") Reg. No. 0679642 dated June 2, 1959, Reg. No. 0840642 dated December 12, 1967, and Certification Mark Reg. No. 2353970 dated May 30, 2000.

 

Respondent is based in China and appears to sell valves and accessories for use in the oil and natural gas industry. It was the owner of Chinese Trademark Registration No. 43120102 for the mark APIMEIVALVE in Class 7, however, this registration is no longer subsisting after Complainant succeeded in a January 11, 2024 invalidation request before the China National Intellectual Property Administration ("CNIPA").

 

The <apimeivalve.com> domain name is identical or confusingly similar to Complainant's API mark as it merely adds the descriptive words "mei" and "valve" as well as the ".com" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known by the domain name.

 

The disputed domain name was registered and is used in bad faith where Respondent had actual knowledge of Complainant's mark and it seeks to attract internet users to its website for commercial gain based on confusion with the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns rights in the API trademark and the <apimeivalve.com> domain name is confusingly similar to Complainant's mark despite its addition of the descriptive word "mei", the generic word "valve", and the ".com" TLD;

-       Respondent has no rights to the mark, it is not commonly known by the disputed domain name, and its operation of a website claiming to sell products which are certified by Complainant as well as the products of third parties is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; and

-       Respondent's activities seek commercial gain based on a likelihood of confusion with the API mark and the <apimeivalve.com> domain name was registered and is used in bad faith.

 

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.

 

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").

 

Identical and/or Confusingly Similar

Complainant claims rights in the API mark through registration with the United States Patent and Trademark Office (USPTO). Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").  Complainant provides screenshots of its USPTO trademark registration certificates and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the claimed mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <apimeivalve.com> domain name is confusingly similar to the API mark because it incorporates the entirety of the mark and adds the descriptive word "mei" (a Chinese word meaning "beauty," beautiful," or "pretty") and the generic word "valve". It also adds the ".com" TLD. The addition of generic or descriptive terms to a mark typically does not negate any confusing similarity between a disputed domain name and the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term "security" to the complainant's VANCE mark, which described the complainant's business, the respondent "very significantly increased" the likelihood of confusion with the complainant's mark). Complainant's mark is plainly recognizable in the disputed domain name and addition of the word "mei" and "valve" (which directly relates to Complainant's line of business), as well as the ".com" TLD does not detract from the meaning of the mark. As such, the Panel finds that the <apimeivalve.com> domain name is confusingly similar to the API mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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.").

 

Apparently in reference to Policy ¶ 4(c)(ii), Complainant asserts that it has not given Respondent permission to use the API mark. Furthermore, the Panel notes that it is well accepted that WHOIS information may be considered when determining whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same). In addition, where there is no evidence to indicate that a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interests in 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)"); see also Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS Registrar verification for the <apimeivalve.com> domain name lists the Registrant as "zhao" and "reanod" and Complainant states that "Respondent has no connection or affiliation with Complainant, and it has not sought a license from Complainant to display the API Monogram Mark on its goods. Additionally, Complainant has not consented to or licensed Respondent to use the Domain Name." Based on presented evidence, the Panel sees no ground upon which to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, although no mention is made in the Complaint of Policy ¶¶ 4(c)(i) or (iii), the Panel determines that analysis of these provisions is nevertheless warranted. The offering of a complainants' products or services, whether as an authorized or unauthorized dealer, is subject to the now-familiar four-part test set out in the seminal UDRP decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Under this test, i) Respondent must actually offer Complainant's goods and services; ii) Respondent must offer only the trademarked goods or services of Complainant; iii) the website must accurately and prominently disclose Respondent's relationship (or lack thereof) with Complainant; and iv) Respondent must not attempt to corner the market on registering domain names that incorporate Complainant's trademark. Here, Complainant has submitted screenshots of the <apimeivalve.com> website and the Panel notes the prominent appearance of the term APIMEIVALVE at the top and repeated appearances of the words "API Valve, Pipeline Valve, API Certified Valves Manufacturer". One of the screenshots also shows the name "JIANGSU MEIVALVE MACHINERY CO., LTD." One of the products offered for sale displays the description "API 6A is a specification set forth by the American Petroleum Institute for oil and gas equipment." However, of particular note, the site also offers other products that make no mention of the API specification including those designated as "spare parts" and "pipe fittings". Respondent has not participated in this case and so it has not provided any rebuttal evidence or argument. In reviewing this evidence, the Panel finds, at a minimum, that Respondent's activities do not satisfy the first or second elements of the Oki Data test. Complainant asserts that Respondent, apparently a manufacturer of valves, has not sought or been granted permission to use the API mark on its goods. As such, a prima facie case has been made that Respondent is not actually offering Complainant's products or services. Further, the appearance of other related products that are not even subject to certification under the API mark are offered and so this fails the second prong of the Oki Data test. Based on this analysis, the Panel finds that Respondent is not using the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is also not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent had actual knowledge of the API mark at the time it registered the <apimeivalve.com> domain name. A respondent's actual knowledge of a complainant's rights in an asserted mark prior to registering the disputed domain name can form a foundation upon which to base an argument for bad faith. 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 Jan. 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"). Complainant claims that Respondent's website content shows that it had actual knowledge of the API mark at the time that it registered the disputed domain name and the Panel agrees.

 

Next, Complainant asserts that, through Respondent's use of the disputed domain name, it seeks commercial gain based on confusion with the asserted trademark. Use of a disputed domain name to falsify endorsement by a complainant and sell unauthorized products indicates bad faith registration and use per Policy ¶ 4(b)(iv). See The Consumer Goods Forum v. Robert Burgh, Nexcor Technologies, Inc., D2021-3918, (WIPO Jan. 18, 2022) (finding bad faith where the disputed domain name and its website content improperly conveyed endorsement under Complainant's GFSI certification mark). As noted above, the <apimeivalve.com> domain name resolves to a website at which Respondent features the API mark but falsely states that some of its products are certified under the mark and also offers for sale related products and accessories that are not within the purview of Complainant's certification. Therefore, by a preponderance of the evidence, the Panel finds that Respondent is seeking commercial gain based on a likelihood of confusion with Complainant's mark and that it registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).

 

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 <apimeivalve.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: October 18, 2024