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Lost in #UDRP : No, “solar turbines” is not a generic pair of #domain keywords

If you thought that the words “solar turbines” is a generic keyword pair, you’d be surprised.

The Solar Turbines company has a long history going back almost 100 years, and it’s a subsidiary of Caterpillar.

Although they don’t have a US trademark for SOLAR TURBINES, they registered one in Mexico in 2012.

In a UDRP against the domain SolarTurbines.CO, the company used that mark to take over the domain. The Chinese registrant lost the case, by not responding to the Complainant’s allegations. SolarTurbines.CO was thus ordered to be transferred.

Full details on the decision follow:

Solar Turbines Incorporated v. Pushpinder K Sidhu / solarturbines

Claim Number: FA2001001877511

PARTIES

Complainant is Solar Turbines Incorporated (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, United States. Respondent is Pushpinder K Sidhu / solarturbines (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <solarturbines.co>, registered with Key-Systems GmbH.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra J. Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 2, 2020; the Forum received payment on January 2, 2020.

On January 6, 2020, Key-Systems GmbH confirmed by e-mail to the Forum that the <solarturbines.co> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2020 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@solarturbines.co. Also on January 15, 2020, 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 February 5, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <solarturbines.co> domain name is confusingly similar to Complainant’s SOLAR TURBINES mark.

2. Respondent does not have any rights or legitimate interests in the <solarturbines.co> domain name.

3. Respondent registered and uses the <solarturbines.co> domain name in bad faith.

B. Respondent failed to file a Response in this proceeding.

FINDINGS

Complainant, Solar Turbines Incorporated, is in the business of the design and manufacture of industrial gas turbines and turbo machinery. Complainant holds a registration for the SOLAR TURBINES mark with the Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 1,332,695, registered Nov. 29, 2012).

Respondent registered the <solarturbines.co> domain name on November 30, 2018, and fails to make an active use of the domain name.

DISCUSSION

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”).

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the SOLAR TURBINES mark based upon the registration with the MIIP. Registration of a mark with a governmental trademark agency is sufficient to establish rights in the mark under Policy ¶ 4(a)(i)). See Solar Turbines Incorporated v. Thomas Boys / zaza plc / nally micheal / zaza plc, FA 1769295 (Forum Mar. 5, 2018) (“Complainant provides evidence of its trademark registration for SOLAR TURBINES with MIIP and the Panel finds that it has trademark rights in that expression.”).

Respondent’s <solarturbines.co> domain name incorporates Complainant’s SOLAR TURBINES mark and simply adds a TLD. The addition of a TLD does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Accordingly, the Panel finds that Respondent’s <solarturbines.co> domain name is confusingly similar to Complainant’s SOLAR TURBINES mark.

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <solarturbines.co> domain name because Respondent is not commonly known by the disputed domain name, and is not authorized or permitted to use Complainant’s SOLAR TURBINES mark. The WHOIS information for the disputed domain name identifies the registrant as “Pushpinder K Sidhu / solarturbines” but Respondent provides no evidence in support of the “solarturbines” part of this identity. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (FORUM June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (FORUM July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name).

Complainant also argues that Respondent doesn’t use the disputed domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead passively holds the disputed domain name. Failure to actively use a disputed domain name is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the error page resolving from the disputed domain name. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <solarturbines.co> domain name in bad faith because Respondent disrupts Complainant’s business by competing with Complainant for Internet traffic. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).

Complainant further contends that Respondent registered and uses the <solarturbines.co> domain name in bad faith because Respondent fails to make active use of the domain name. The use of a domain name to resolve to an inactive webpage can be evidence of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Accordingly, the Panel finds bad faith under Policy ¶ 4(a)(iii).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <solarturbines.co> domain name be TRANSFERRED from Respondent to Complainant.

Sandra J. Franklin, Panelist

Dated: February 6, 2020


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