Solar Turbines Incorporated v. Easypesi8 / Broi Jorduy / Mr. Marshall Walker
Claim Number: FA2303002035920
Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia. Respondent is Easypesi8 / Broi Jorduy / Mr. Marshall Walker (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <solartrubine.com>, <solarturdines.com>, registered with NameCheap, Inc.; NameSilo, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 15, 2023; Forum received payment on March 15, 2023.
On March 15, 2023; Mar 16, 2023, NameCheap, Inc.; NameSilo, LLC confirmed by e-mail to Forum that the <solartrubine.com>, <solarturdines.com> domain names are registered with NameCheap, Inc.; NameSilo, LLC and that Respondent is the current registrant of the names. NameCheap, Inc.; NameSilo, LLC has verified that Respondent is bound by the NameCheap, Inc.; NameSilo, 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 March 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 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@solartrubine.com, postmaster@solarturdines.com. Also on March 21, 2023, 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 April 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that is a Delaware corporation and wholly owned subsidiary of Caterpillar Inc., a Fortune 100 company and leading U.S. exporter. 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. Complainant offers products and services under its SOLAR and SOLAR TURBINE marks in two major industries: oil and gas, and power generation. Complainant’ products include gas turbine engines, gas compressors, gas turbine-powered compressor sets, mechanical-drive packages, and generator sets, among others. Complainant’ services include gas compressor restages and overhaul, gas turbine overhaul, parts replacement, field service, equipment optimization, and training. Complainant’s products and services are offered in numerous locations worldwide. Its units operate in more than 100 countries and have provided more than 3 billion operating hours. Complainant asserts rights in the SOLAR mark based upon its registration in the United States in 1975; and in the SOLAR TURBINES mark based upon its registration in Mexico in 2012.
Complainant alleges that the disputed domain names are confusingly similar to its SOLAR TURBINES trademark because they consist of misspellings of the mark (the order of letters “r” and “u” is switched, the letter “s” is removed, the letter “b” is replaced with “d”), with the addition of the generic top-level domain name (“gTLD”) “.com”. They are also confusingly similar to Complainant’s SOLAR mark because they incorporate the mark in its entirety and merely add misspelled versions of the term “turbine”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s marks and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain names do not resolve to active websites. Respondent uses the disputed domain names to attempt to pass off as Complainant in furtherance of a fraudulent email phishing scheme. Specifically, Respondent has used the disputed domain names falsely to impersonate an employee of Complainant’s wholly owned Swiss subsidiary in emails using @solartrubine.com and @solarturdines.com addresses; under the guise of falsely impersonating Complainant, Respondent attempted to defraud Complainant and its customer by diverting payments; the signature block of the fraudulent emails displays the actual physical address of Complainant’s Swiss subsidiary. Further, Respondent engages in typosquatting. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has a pattern of bad faith registration by registering multiple domain names in the instant case. Respondent uses the disputed domain names to attempt to impersonate Complainant in fraudulent phishing emails. The disputed domain names do not resolve to active websites. Respondent had actual knowledge of Complainant’s rights in its marks. Respondent engages in typosquatting. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control as the fraudulent emails sent using the disputed domain names are essentially identical. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on both contested domain names, and the two registrants (“Easypesi8 / Broi Jorduy” and “Mr. Marshall Walker”) are collectively referred to as “Respondent”.
Complainant owns the marks SOLAR and SOLAR TURBINES and uses them to provide industrial gas turbines and turbomachinery packages and related services.
Complainant’s rights in its marks date back to, respectively, at least 1975 and 2012.
The disputed domain names were registered in 2023.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent uses the disputed domain names to attempt to pass off as Complainant in furtherance of a fraudulent email phishing scheme; the signature block of the fraudulent emails displays the actual physical address of one of Complainant’s subsidiaries.
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”).
The disputed domain names consist of misspellings of Complainant’s SOLAR TURBINES mark (the order of letters “r” and “u” is switched, the letter “s” is removed, the letter “b” is replaced with “d”), with the addition of the generic top-level domain name (“gTLD”) “.com”. Merely misspelling Complainant’s mark in the disputed domain names and adding the gTLD ‘.com’ is insufficient to distinguish the disputed domain names from Complainant’s trademark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s SOLAR TURBINES mark under Policy ¶ 4(a)(i).
Further, the disputed domain names incorporate Complainant’s SOLAR mark in its entirety and merely add misspelled versions of the term “turbine” and the “.com” gTLD. Such changes fail sufficiently to distinguish a disputed domain name from a mark per 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 Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s SOLAR mark per Policy ¶ 4(a)(i).
Respondent is not licensed or otherwise authorized to use Complainant’s marks and is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information for the disputed domain names lists the registrants as “Easypesi8 / Broi Jorduy” and “ Mr. Marshall Walker.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names to attempt to pass off as Complainant in furtherance of a fraudulent email phishing scheme. Specifically, Complainant presents evidence showing that Respondent used the disputed domain names falsely to impersonate an employee of Complainant’s wholly owned Swiss subsidiary in emails using @solartrubine.com and @solarturdines.com addresses; under the guise of falsely impersonating Complainant, Respondent attempted to defraud Complainant and its customer by diverting payments; the signature block of the fraudulent emails displays the actual physical address of Complainant’s Swiss subsidiary. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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); see also Solar Turbines v. Maza (Forum FA1904001838989) (“. . . Respondent uses the <solarturbinez.com> domain name to pass itself off as Complainant. Respondent used the confusingly similar domain name to send an email originating from <solarturbinez.com> and therein pretended to be an employee of Complainant. Respondent also used Complainant’s trademark and logo in the email, all for the purpose of attempting to defraud one of Complainant’s customers. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Caterpillar v. Weinstein (Forum FA1802001770352) (“Complainant asserts Respondent is passing off by impersonating an employee of Complainant to conduct a phishing scheme via email. The Panel finds Respondent’s use constitutes a failure to use the disputed domain name [<caterpillarbrand.com>] for a bona fide offer or a noncommercial fair use per Policy ¶¶ 4(c)(i) and (iii).”). Thus the Panel finds that Respondent fails to use the disputed domain names to make 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).
Further, Respondent engages in typosquatting by registering domain names that are misspellings of Complainant’s SOLAR TURBINE 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). See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
For all the above reasons, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent has engaged in a pattern of bad faith registration and use by registering the two domain names at issue in the instant proceedings. The Panel finds that registration of two domain names is not sufficient to find that there is a pattern of bad faith registration, thus it will not further discuss this allegation.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its 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 names.
Indeed, as already noted, Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Using a misleading email address to defraud unwary customers constitutes bad faith under Policy ¶ 4(a)(iii) and Policy ¶¶ 4(b)(iii) and/or (iv). See 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); see also Solar Turbines v. Thomas Boys (Forum FA1801001769295) (holding respondent’s use of the domain name <solartrubines.com> to send a fraudulent email posed as originating from Complainant and soliciting payment of funds constitutes bad faith under UDRP ¶ 4(b)(iv) because “The disputed domain name is confusingly similar to the Trademark and the intention of the resulting confusion was commercial gain.”); see also Solar Turbines v. Maza (Forum FA1904001838989) (“. . . Respondent uses email originating from the at-issue domain name to pass itself off as Complainant in furtherance of a phishing scheme. Respondent’s use the at-issue domain name to impersonate Complainant and facilitate fraud demonstrates Respondent’s bad faith registration and use of <solarturbinez.com> pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).”); see also Solar Turbines v. Ogunade (Forum FA1810001811640) (“. . . Respondent uses the [domain name] <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).”). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii), and Policy ¶¶ 4(b)(iii) and/or (iv).
Further, also as already noted, Respondent engages in typosquatting. Typosquatting is itself evidence of relevant bad faith registration and use per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Therefore the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s marks: the signature block of the fraudulent emails displays the actual physical address of one of Complainant’s subsidiaries. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes 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 <solartrubine.com> and <solarturdines.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 17, 2023
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