Solar Turbines Incorporated v. Kalculus Ogunade
Claim Number: FA1810001811640
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie M. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Kalculus ogunade (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solarsturbines.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 October 12, 2018; the Forum received payment on October 12, 2018.
On October 16, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <solarsturbines.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 October 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2018 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@solarsturbines.com. Also on October 18, 2018, 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 November 9, 2018, 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.
A. Complainant
i) Complainant, Solar Turbines Incorporated is a world leader in the oil and gas power generation industry. Complainant has rights in the SOLAR TURBINES mark based upon its registration of the mark with trademark authorities around the world (e.g., Mexico- Reg. No. 1,332,695 registered Nov. 29, 2012). See Compl. Ex. 9. Respondent’s <solarsturbines.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire SOLAR TURBINES mark in the domain name and adds one letter “s” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the <solarsturbines.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the typosquatted domain name to pass off as Complainant in furtherance of a fraudulent scheme. Further, Respondent inactively holds the disputed domain name.
iii) Respondent registered and uses the <solarsturbines.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as it has registered typosquatted versions of trademark-related domain names. Additionally, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users by passing off as Complainant via an email phishing scheme. Respondent also engaged in typosquatting when it registered the disputed domain name. Moreover, Respondent fails to actively use the disputed domain name. Further, Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark prior to registering the disputed domain name.
B. Respondent
Respondent did not submit a response.
1. The <solarsturbines.com> domain name was registered on September 12, 2018.
2. Complainant has established rights in the mark SOLAR TURBINES on the basis of its registrations in Algeria, Mexico, and Brunei (e.g., Mexico- Reg. No. 1,332,695 registered Nov. 29, 2012).
3. Emails sent by Respondent solicit payments from Complainant’s customers.
4. The disputed domain name does not resolve to an active webpage.
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.
Complainant has rights in the SOLAR TURBINES mark based upon its registration of the mark with trademark authorities around the world. Registration with one or more governmental trademark authorities sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Teck Resources Limited and Teck Operaciones Mineras Chile Limitada v. Amexa Ltda., FA 1420960 (Forum Jan. 27, 2012) (finding that a trademark registration with the MIIP was sufficient to establish rights in a mark under Policy ¶ 4(a)(i)). Here, Complainant provides copies of its registrations in Algeria, Mexico, and Brunei (e.g., Mexico- Reg. No. 1,332,695 registered Nov. 29, 2012). See Compl. Ex. 9. Therefore, the Panel concludes that Complainant has rights in the SOLAR TURBINES mark under Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <solarsturbines.com> domain name is confusingly similar to Complainant’s mark because Respondent includes the entire SOLAR TURBINES mark in the disputed domain name and adds one letter and a gTLD. The addition of a single letter may be insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (Forum June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”). Additionally, the addition of a gTLD is irrelevant for purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Here, Respondent incorporates the SOLAR TURBINES mark in its entirety in the domain name, adds a letter “s” between “solar” and “turbines,” and adds a “.com” gTLD to the mark. Therefore, the Panel finds that Respondent’s <solarsturbines.com> domain name is confusingly similar to Complainant’s SOLAR TURBINES mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <solarsturbines.com> domain name. Specifically, Complainant claims Respondent is not authorized or permitted to use Complainant’s SOLAR TURBINES mark and is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel may note the WHOIS of record identifies the Respondent as “Kalculus Ogunade,” and no information in the record shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain. See Compl. Ex. 1. Accordingly, the Panel may conclude that the Respondent lacks rights and legitimate interests in the <solarsturbines.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <solarsturbines.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain to pass off as Complainant. Use of a disputed domain name to pass off as a complainant may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name). Here, Complainant claims that Respondent uses the disputed domain name to impersonate Complainant through emails to Complainant’s customers. See Compl. Ex. 11. Therefore, the Panel finds that Respondent uses the <solarsturbines.com> domain to pass off as Complainant, and therefore fails to use the disputed domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant claims that Respondent uses the disputed domain name to attempt to conduct fraudulent transactions. Use of a disputed domain in connection with fraud generally does not constitute a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel recalls that Complainant provides screenshots of emails allegedly sent by Respondent, in which Respondent solicits payments from Complainant’s customers. See Compl. Ex. 11. Therefore, the Panel concludes that Respondent uses the <solarsturbines.com> domain name to defraud Complainant’s customers, and therefore fails to use the disputed domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Next, Complainant argues that Respondent inactively holds the <solarsturbines.com> domain name. Inactive holding may not be considered a bona fide offering or a legitimate use under Policy ¶¶ 4(c)(i) or (iii). See Guess? IP Holder L.P. and Guess?, Inc. v. xi long chen, FA 1786533 (Forum June 15, 2018) (“The disputed domain name resolves to a parked page with the message, “website coming soon!” The Panel finds that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii) and Respondent does not have rights or legitimate interests with respect of the domain name.”). Here, Complainant provides a printout showing that the disputed domain name does not resolve to an active webpage. See Compl. Ex. 12. The Panel determines that Respondent inactively holds the <solarsturbines.com> domain name, and therefore fails to use the disputed domain in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Finally, Complainant claims that Respondent lacks rights and legitimate interests in the <solarsturbines.com> domain name because Respondent engages in typosquatting. Typosquatting may evince a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Here, Complainant claims that Respondent’s domain name is a misspelling of Complainant’s SOLAR TURBINES mark and Complainant’s own <solarturbines.com> domain name. See Compl. Ex. 7. The Panel notes that the two domains differ only by a letter “s” between the words “solar” and “turbine.” The Panel concludes that Respondent engages in typosquatting, and therefore lacks rights and legitimate interests in the <solarsturbines.com> domain name under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has engaged in a pattern of bad faith registration and use based on Respondent’s registration of domain names infringing on other famous marks. Holding domain names infringing on other famous third-party marks may establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Bloomberg Finance L.P. v. Xiaohua Dai, FA 1454296 (Forum Aug. 22, 2012) (finding a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii) because the complainant submitted evidence that the respondent had previously registered domain names incorporating famous third-party marks). Here, Complainant provides Whois records showing Respondent as the registrant of domain names allegedly infringing on famous third-party marks, along with screenshots from the legitimate trademark holders’ websites (e.g. Respondent’s <trimilusion.com> domain name compared to screenshots of the resolving webpage for <trimillusion.com>). See Compl. Ex. 13. Therefore, the Panel finds that Respondent holds other domain names infringing on famous third-party marks, and therefore engages in a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent registered and uses the <solarsturbines.com> domain name in bad faith because Respondent uses the domain to disrupt Complainant’s business and gain commercially by passing off as Complainant. Passing off as a complainant via emails, for commercial gain, may evince bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that the respondent’s use of <chevron-corps.com> to impersonate an executive of the complainant in emails is in opposition to the complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). The Panel recalls that Complainant provides screenshots of emails in which Respondent allegedly solicits payments from Complainant’s customers. See Compl. Ex. 11. Therefore, the Panel concludes that Respondent uses the <solarsturbines.com> to pass off as Complainant in furtherance of fraud, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(b)(iii) and/or (iv).
Next, Complainant asserts that Respondent registered and uses the <solarsturbines.com> domain name in bad faith because Respondent engages in typosquatting. Typosquatting may support a finding of bad faith under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). The Panel recalls that Respondent’s <solarsturbines.com> domain name and Complainant’s <solarturbines.com> domain name differ only by a letter “s” between the words “solar” and “turbine.” See Compl. Ex. 7. Therefore, the Panel determines that Respondent engages in typosquatting, and therefore registered and uses the <solarsturbines.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues bad faith based on Respondent’s inactive holding of the <solarsturbines.com> domain name. Inactive holding may evince bad faith registration and use under Policy ¶ 4(a)(iii). See Lyft, Inc. v. Stylianos Kandias, FA 1795070 (Forum Aug. 5, 2018) (“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”). The Panel recalls that Complainant provides a screenshot showing that the <solarsturbines.com> domain name does not resolve to an active webpage. See Compl. Ex. 12.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant is one of the world’s leading designers and manufacturers of industrial gas turbines and turbomachinery packages for use in the oil and gas and power generation industries. Complainant traces its roots to the 1920s through its predecessors Prudden-San Diego Airplane Company and Solar Aircraft Company. In November 2017, Complainant celebrated its 90th anniversary. (Exhibit 3: excerpts from Solar Turbines’ SOLARTURBINES.COM website. See pdf pages 20-22 for a description of its 90th anniversary celebration and company information page. Solar Turbines’ registration and use of the domain name SOLARTURBINES.COM is described further below.) Complainant’s units operate in more than 100 countries and have provided more than 2.5 billion operating hours. Complainant has extensively and widely advertised and promoted its products and services under the SOLAR TURBINES and SOLAR marks and names for decades, and spends significant amounts of money every year to do so. As a result of Complainant's use of the SOLAR TURBINES and SOLAR marks worldwide for decades, its extensive advertisement and promotion of its marks, products, and services, and its tremendous commercial success, Complainant's mark SOLAR TURBINES has been internationally well-known in the oil and gas and power generation industries; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Therefore, the Panel concludes that Respondent inactively holds the <solarsturbines.com> domain name, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SOLAR TURBINES mark prior to registering the <solarsturbines.com> domain name. Actual knowledge may support a finding of bad faith under Policy ¶ 4(a)(iii), and may be established by the fame of the mark and the respondent’s use of it. Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Complainant cites the similarity between the <solarsturbines.com> domain name and Complainant’s <solarturbines.com> domain name and Respondent alleged passing off activities as evidence. See Compl. Exs. 7 and 12. Therefore, the Panel infers due to the fame of the Complainant's mark and the manner of use of the disputed domain name that Respondent registered the <solarsturbines.com> domain name with actual knowledge of Complainant’s rights in the SOLAR TURBINES mark, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solarsturbines.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 11, 2018
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