Swagelok Company v. zidong huang / huangzidong
Claim Number: FA1607001683672
Complainant is Swagelok Company (“Complainant”), represented by Brendon P. Friesen of Mansour Gavin LPA, Ohio, USA. Respondent is zidong huang / huangzidong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swagelok021.com>, registered with Jiangsu Bangning Science & technology Co. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2016; the Forum received payment on July 13, 2016. The Complaint was submitted in both Chinese and English.
On July 14, 2016, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to the Forum that the <swagelok021.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 14, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2016 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@swagelok021.com. Also on July 14, 2016, 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 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is the industry leader in the development, manufacture and distribution of advanced and innovative fluid system products, services and solutions to a wide range of global industries including, but not limited to, chemical and petrochemical, oil and gas, alternative fuels, biopharmaceutical, power and semiconductor. Complainant has registered the SWAGELOK mark in numerous jurisdictions around the world, including China, with rights dating back to 1954.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s SWAGELOK mark. The disputed domain name includes the entire mark adding the number “021” and the generic top level domain (“gTLD”) “.com.” Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the SWAGELOK mark in any manner. Respondent is not making a bona fide offering of goods and services nor a noncommercial fair use of the disputed domain name. Rather, Respondent is using the disputed domain to sell products that directly compete with those offered by Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain to sell products that compete with Complainant disrupts Complainant’s legitimate business purpose while commercially benefiting Respondent. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark SWAGELOK dating back to 1954.
The disputed domain name was registered in 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that features products that compete with those of Complainant.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Prior to considering the three elements of the Policy, the Panel must deal with a procedural issue: the language of the proceedings.
The Panel notes that the Registration Agreement is written in Chinese, thereby in principle making the language of the proceedings Chinese. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of English. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the German language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, the web site at the disputed domain name is partly in English, and contains a language selection tab for the English language. This indicates that Respondent is able to communicate in English.
Therefore, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. See Swagelok v. Lai Fuhai/Lan Fuhai, FA 1588174 (Forum Dec. 23, 2014).
The disputed domain name is confusingly similar to Complainant’s SWAGELOK mark: it includes the entire mark while adding the number “021” and the gTLD “.com.” These elements do not distinguish the disputed domain name from their mark. See Am. Online Inc., v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Swagelok v. Lai Fuhai/Lan Fuhai, FA 1588174 (Forum Dec. 23, 2014); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel holds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent has not been affiliated with Complainant, given permission to use Complainant’s trademark, or been commonly known by the disputed domain names. WHOIS information associated with the disputed domain name indicates that Respondent registered the domains using the name “Zidong Huang,” which does not appear to resemble the domain name. Prior panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record to the contrary. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel concludes that Respondent has not been commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed domains to resolve to websites that offers products and services that compete with Complainant. Past panels have held that use of a confusingly similar domain to sell complainant’s competitors’ products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent’s use does not fall within the permissible uses of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As previously stated, the disputed domain name resolves to a website that offers products that compete with those of Complainant. Past panels have found bad faith disruption and competition where a domain was used to divert users to a competing website that offered a complainant’s competitors’ products. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel finds bad faith under Policy ¶ 4(b)(iii).
Further, Respondent’s use of the SWAGELOK mark in the disputed domain name demonstrates an intent to confuse and attract Internet users to the disputed domain for Respondent’s commercial gain. Again, Respondent uses the disputed domain name to resolve to a website that offers competing products for sale. Past panels have found bad faith where a respondent used domains that are confusingly similar to another’s mark for the purposes of selling competing products without authorization. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel finds that Respondent has created a likelihood of confusion through the registration and use of the disputed domain name from which Respondent profits; accordingly the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swagelok021.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 11, 2016
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