Balon Corporation and Valve Innovations, LLC v. Zhang Shao Bing
Claim Number: FA2207002002820
Complainant is Balon Corporation and Valve Innovations, LLC (“Complainant”), represented by Chase C. Webb of McAfee & Taft A Professional Corporation, Oklahoma, USA. Respondent is Zhang Shao Bing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bivcbolon.com>, registered with Jiangsu Bangning Science & technology Co. Ltd.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2022; the Forum received payment on July 1, 2022.
On July 12, 2022, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <bivcbolon.com> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. Ltd. 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 July 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@bivcbolon.com. Also on July 15, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two (2) Complainants in this matter: Balon Corporation and Valve Innovations, LLC. Complainant submits that a sufficient nexus exists between the Balon Corporation and Valve Innovations, LLC. to be treated as a single entity against Respondent as Valve Innovations conveyed to Balon Corporation the right to use the Balon mark, by way of a license agreement in connection with its goods and the right to register and use the domain name. Complainant has provided an Affidavit to support its submission. As such, there is a sufficient nexus between the two complainants to file this Complaint together.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus between the two complainants, the Panel determines to treat them all as a single entity in this proceeding. The two complainants will be collectively referred to as “Complainant.”
A. Complainant
i) Complainant is engaged in the valve manufacturing and retail services. Complainant submits that ‘Valve Innovations, LLC’ has rights in the BALON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,546,072 registered July 4, 1989). The disputed domain name is confusingly similar to Complainant’s mark because it incorporates a misspelled version of Complainant’s mark, preceded by an acronym for Respondent’s business name, Bolon Industrial Valve Company with the addition of the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the BALON mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
iii) Respondent registered and uses the disputed domain in bad faith. Respondent is creating a likelihood of confusion with Complainant’s mark to attract consumers to its own website which offers goods in direct competition with Complainant’s goods. Respondent’s non-use of the site for any legitimate offering of goods is additional evidence of its bad faith registration and use of the domain name.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on May 13, 2011.
2. Complainant has established rights in the BALON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,546,072 registered July 4, 1989).
3. The term “bivc” is not an acronym for Complainant’s business name but Respondent’s business name “Bolon Industrial Valve Company.”
4. The disputed domain name’s resolving website displays information that the ‘U.S. Bolon Industrial Valve Company’ was founded in 1965, and the company became a British Bolon consortia MI wholly owned subsidiary in 1978.
5. The disputed domain name’s resolving website indicates that Bolon Industrial Valve Company’s representatives are located in major cities throughout the world USA, Canada, Mexico, United Kingdom, China and Singapore with the detailed physical contact information including phone and fax numbers.
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”).
Complainant claims rights in the BALON mark through its registration with the USPTO (e.g., Reg. No. 1,546,072 registered July 4, 1989). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has rights in the BALON mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <bivcbolon.com> is confusingly similar to Complainant’s BALON mark because it incorporates a misspelled version of Complainant’s mark, and is merely preceded by the term “bivc” with the addition of the “.com” gTLD. The Panel observes that minor spelling errors do not obviate a finding of confusing similarity. Utilization of an acronym for Complainant’s business name also does not obviate a finding of confusing similarity. See Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the disputed domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci.” The Panel stated, “Each of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i).).
The Panel is of the view that the term “bivc” is not a mere descriptive term in connection with the relevant goods and services. The Panel therefore finds that the disputed domain name <bivcbolon.com> comprising of “bivc,” a unique acronym for Respondent’s business name and “bolon” an abbreviation of Respondent’s business name is not confusingly similar to Complainant’s BALON mark.
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bivcbolon.com> domain name REMAIN WITH Respondent.
Ho-Hyun Nahm, Esq., Panelist
Dated: August 16, 2022
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