Emerson Vulcan Holding LLC v. Dan Thompson / Valvelite Incorporated
Claim Number: FA1902001830108
Complainant is Emerson Vulcan Holding LLC (“Complainant”), represented by Heather S. Stutz of Quarles & Brady LLP, Wisconsin, USA. Respondent is Dan Thompson / Valvelite Incorporated (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keystonevalvesupplies.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2019; the Forum received payment on February 15, 2019.
On February 18, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <keystonevalvesupplies.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2019 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@keystonevalvesupplies.com. Also on February 22, 2019, 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 March 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 manufactures and sells a wide range of products including KEYSTONE-brand valves. Complainant has rights in the KEYSTONE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,572,890, registered Dec. 26, 1989) and the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA384872, registered May 24, 1991). Respondent’s <keystonevalvesupplies.com> domain name is confusingly similar to Complainant’s mark as it merely appends the descriptive phrase “valve supplies” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <keystonevalvesupplies.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to draw Internet users to a site offering Complainant’s goods and competing brands of Complainant’s goods.
Respondent registered and uses the <keystonevalvesupplies.com> domain name in bad faith. Respondent has a history of registering domain names incorporating trademarks identifying brands of valves. Additionally, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s KEYSTONE mark and to disrupt Complainant’s business by offering competing products. Further, Respondent registered the domain name with actual knowledge of Complainant’s KEYSTONE mark as shown by the fame of the mark along with Respondent’s own admission to knowing of Complainant’s mark through email correspondence with Complainant.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <keystonevalvesupplies.com> domain name on April 10, 2017.
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.”).
Complainant claims rights in the KEYSTONE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,572,890, registered Dec. 26, 1989) and the CIPO (e.g. Reg. No. TMA384872, registered May 24, 1991). Registration of a mark with multiple trademark authorities sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the KEYSTONE mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <keystonevalvesupplies.com> domain name is confusingly similar to Complainant’s mark as it merely appends the descriptive phrase “valve supplies” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). The Panel therefore finds that the <keystonevalvesupplies.com> domain name is confusingly similar to the KEYSTONE mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <keystonevalvesupplies.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a respondent fails to respond, relevant information includes the WHOIS to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). 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). The WHOIS identifies “Dan Thompson / Valvelite Incorporated” as the registrant, and nothing in the record suggests that Respondent had permission to use the KEYSTONE mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <keystonevalvesupplies.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the domain name to draw Internet users to a site offering Complainant’s goods and competing brands of Complainant’s goods. Using a confusingly similar domain name to compete with a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”); see also The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage, which displays the title “Valvelite Incorporated Distributor of High Quality Industrial Valves” along with images of various valve brands, including KEYSTONE. Complainant also provides email correspondence from Respondent, where Respondent acknowledges engaging in the business of selling valve products in competition with Complainant. As such, the Panel holds that Respondent’s competing use of the domain name provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the infringing domain name in bad faith as Respondent has a history of registering domain names incorporating trademarks identifying brands of valves. The registration of multiple confusingly similar domain names of third-party marks can demonstrate bad faith under Policy ¶ 4(b)(ii). Complainant provides various exhibits to show that Respondent is the owner of the <keystonevalves.ca>, <brayvalves.ca>, and <cashcovalves.com> domain names, all of which incorporate a valve-related trademark. Accordingly, the Panel agrees that Respondent’s registration of multiple domain names containing valve-related trademarks provides some evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii).
Next, Complainant claims that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s KEYSTONE mark and to disrupt Complainant’s business by offering competing products. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) where the respondent used the domain name to offer competing cryptocurrency products). Complainant’s provided screenshot of the resolving webpage displays the title “Valvelite Incorporated Distributor of High Quality Industrial Valves” along with images of various valve brands, including KEYSTONE. Complainant also provides email correspondence from Respondent, where Respondent acknowledges engaging in the business of selling valve products in competition with Complainant. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the KEYSTONE mark at the time of registering the at-issue domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). Complainant contends that Respondent’s knowledge is evidenced by giving Respondent’s own admission to knowing of Complainant’s mark through email correspondence with Complainant. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <keystonevalvesupplies.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 29, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page