ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant in this proceeding is PARKER HANNIFIN CORPORATION, ("Parker"), 6035 Parkland Boulevard, Cleveland, OH 44124-4141, U.S.A.
No response has been filed. The registrant of the at-issue domain name and nominal respondent is East Bay Website Company. 7020A Commerce Drive, Pleasanton, CA, 94588, USA.
The subject domain name is PARKERORINGS.COM and the registrar is Network Solutions, Inc. ("NSI").
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website July 21, 2000. The hardcopy of the Complaint Form was received on July 31, 2000. Payment was received on July 25, 2000.
Upon receiving all the required information, eResolution's clerk proceeded to:
- Confirm the identity of the Registrar for the contested Domain Name;
- Verify the Registrar's Whois Database and confirm all the required contact information for Respondent;
- Verify if the contested Domain Name resolved to an active Web page;
- Verify if the Complaint was administratively compliant.
The inquiry led the Clerk's Office of eResolution to the following conclusions: the Registrar is Network Solutions, Inc., the Whois database contains all the required contact information, the contested Domain Name resolves to an inactive Web page and the Complaint is administratively compliant.
An email was sent to the Registrar by eResolution Clerk's Office to confirm the name of the billing contact and to obtain a copy of the Registration Agreement on July 21, 2000. The requested information was received July 24, 2000.
The Clerk's Office then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy.
The Clerk's Office fulfilled all its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent on August 10, 2000. That date is the commencement date of the administrative proceeding.
On August 10, 2000, the Clerk's Office notified the Complainant, the Respondent, the concerned Registrar, and ICANN of the date of commencement of the administrative proceeding.
On August 30, 2000, the Clerk's Office notified the Respondent and the Complainant of the failure of the first one to respond to the complaint. It also informed the parties that according to ICANN Rules Art.5 (ix)(e)"If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
The complaint, official notification and all the annexes were sent by UPS to the respondent's various addresses. According to the UPS tracking system, all were delivered.
On September 1st, 2000, Mr. Paul DeCicco was appointed as leading Panelist for this case by the Secretariat of eResolution.
On September 6, 2000, the Clerk's Office forwarded a user name and a password to Mr. Paul DeCicco, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On September 6, 2000, the parties were notified that Mr. Paul DeCicco had been appointed and that a decision was to be, save exceptional circumstances, handed down on September 14, 2000.
3. Factual Background
Complainant, Parker Hannifin Corporation ("Parker"), manufactures and sells, through its company stores, authorized distributors, and on-line, a wide variety of components, including seals, valves, hoses, cylinders, and actuators, for fluid transfer and other motion control applications.
Parker, by and through its subsidiaries Parker Intangibles Inc. or Parker Hannifin Customer Support, is the registered owner in the United States of the mark "PARKER," Reg. No. 768,773), issued April 28, 1964, and alleging a date of first use in commerce in 1926. The goods identified in Reg. No. 768,773 are as follows: sealing devices, including packings of deformable materials, o-rings, seal back-up rings, etc. Parker uses the "PARKER" mark in commerce in the United States and worldwide in connection with the sale of o-rings and other seal products.
East Bay Website Company ("East Bay") is the registrant of parkerorings.com. However, the registrant was engaged by, Miller Seals ("Miller"), 7020A Commerce Drive, Pleasanton, CA 94588, to secure the domain in advance of the establishment of a website on behalf of Miller. Complaint § C.
4. Parties' Contentions
The Complainant's contentions are as follows:
Copy or Similarity
1.Upon information and belief, East Bay Website Company ("East Bay"), the named registrant of the parkerorings.com domain at issue, is a website developer who was engaged by the real party in interest, Miller Seals ("Miller"), 7020A Commerce Drive, Pleasanton, CA 94588, to secure the domain in advance of the establishment of a website on behalf of Miller. 2. Miller is believed to be an independent distributor of o-rings and other seal products which compete directly with o-rings and other seal products sold by the Complainant Parker. 3. As used by Miller in connection with the sale or offering for sale of o-rings and other seal products, the parkeroring.com domain is confusingly similar to the "PARKER" mark as used in commerce by Parker in connection with the sale or offering for sale of o-rings and other seal products.
1. At on time, Miller had been an authorized distributor of Parker o-rings and seal products, but that authorization had been revoked at least several years prior to Miller's registration of the parkerorings.com domain. 2. Miller currently neither stocks nor sells Parker o-rings or any Parker seal products, and, upon information and belief, was neither stocking nor selling Parker o-rings or any Parker seal products at that time of its registration of the parkerorings.com domain.
1. To the extent that Miller is using the parkerorings.com domain name, Miller, for its own commercial gain, is intentionally attempting to misdirect Internet users seeking to purchase genuine Parker o-rings to its own Miller website where genuine Parker o-rings are neither sold nor offered for sale. 2. By its association with the well-known and respected "PARKER" mark, Miller further is attempting to mislead Internet users into believing that Miller is an authorized distributor of Parker seals or otherwise that its website is sponsored by or affiliated with Parker. 3. To the extent that Miller is not using the parkerorings.com domain, Miller has registered it in order to prevent Parker as the owner of the "PARKER" mark for o-rings from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct by also registering the domain parkerseals.com.
There is no Response.
5. Discussion and Findings
Standard of Review
Under Section 4(a) of the Policy a successful complainant must plead and prove that: 1) the at-issue domain name is either identical or confusingly similar to the complainant's trademark or service mark; 2) that the respondent or registrant has no right or legitimate interest in the domain name; and 3) that the domain name was registered and is used in bad faith. Policy §4(a).
Registrant East Bay and Real-Party-In-Interest Miller Seals (who has been given notice as listed Technical Contact and Billing Contact) have technically defaulted in this proceeding since no response was filed. Nevertheless, the Panel must evaluate Parker's allegations and annexed material, and then determine whether or not Parker's presentation, evidence, and argument is sufficient to establish the "proof" required by the Policy.
Identical or Confusingly Similar
The PARKER United States Trademark Registration covers and concerns "o-rings." The Panel finds that the (second level) domain name "parkerorings.com" is confusingly similar to a registered federal trademark of the Complainant namely PARKER.
Parkers's Rights and Legitimate Interest in the Domain Name
By virtue of the domain name registration service agreement between the Registrant and the registrar NSI, a presumption arises that the Registrant has at least some rights and legitimate interests in the subject domain name. According to the agreement, the Registrant, inter alia, warrants as a condition of registration, that to the best of the registrant's knowledge and belief neither the registration of the domain name, nor the manner in which it intends to use such domain name will directly or indirectly infringe the legal rights of a third party. NSI Registration Agreement, https://www.networksolutions.com/legal/service-agreement.html §17(ii).
Complainant alleged facts which are sufficient to demonstrate that the real-party-in-interest and listed Technical/Billing Contact, Miller Seals (also referred to as Miller herein) can be considered to be the de facto or equitable registrant of the "parkerorings.com" domain name. Miller was at one time authorization to trade on behalf of the Complainant, but permission to use the PARKER mark had been revoked at least several years prior to the registration of the at-issue domain name.
Miller was neither stocking nor selling Parker o-rings or any Parker o-rings or any Parker seal products at that time of the registration of the parkerorings.com domain. As a former distributor for Parker, it is presumed, absent evidence to the contrary, that Miller knew of the PARKER mark and likewise knew that it had no legitimate rights or interest in using the domain name in connection with its business. It may be inferred that Miller likewise knew that the registration of the domain name would directly or indirectly "infringe the legal rights of a third party" -Parker, who was engaged in the same line of business as Miller. As the de facto or equitable domain name registrant, Miller is held to the terms of conditions of the domain name registration agreement. Miller's registration of the domain name against the interest of Parker is a breach of that agreement since the rights of Parker may be "directly or indirectly" infringed. Through this breach of the registration agreement, the Panel finds that the de-facto or equitable registrant Miller, has no rights or legitimate interests in the subject domain name.
Section 4(b)(i)-(iv) of the Policy sets out certain factors which if present, shall be evidence of the domain name's registration and use in bad faith. Pursuant to Section 4(b)(ii) of the Policy, registering "the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name" shall be evidence of 4(a)(ii) "bad faith" "provided that the registrant [you] has [have] engaged in a pattern of such conduct." Complainant alleges that to the extent that Miller is not using the at-issue domain name, it had registered "parkerseals.com" in addition to the at-issue domain name for the purpose of preventing Parker from reflecting its mark in a corresponding domain names. Absent any controverting evidence, the panel finds as pled that the registration of each of these domain names was made in order to prevent Parker from reflecting its mark in a corresponding domain names. As such, the panel finds "bad faith" registration of the at-issue domain name.
Under Section 4(a)(iii) of the Policy, the subject domain name must not only be registered in "bad faith," but also must be "used in bad faith." Ostensibly, as to this factor the Complainant alleges that "to the extent that Miller is using the parkerorings.com domain name" Miller is using the domain name to direct traffic away from the Parker website and to its own website for commercial gain. Emphasis added. It is not at all clear from this averment that Miller is in fact using the domain name at all, or has ever used the domain name. There is no indication that Miller or the registrant or anyone else for that matter has or had a website referenced by the at-issue domain name. Indeed the Provider reports that upon checking the URL parkerorings.com there was no website referenced. Alleging, as Complaint has, that "to the extent" the domain name is "in use . . ." does not clearly convey to the Panel that the at-issue domain name is now in use, or ever has been in use. The averment is tantamount to alleging that if the Respondent used the domain name, then it was used it in a particular manner. Indeed, we must speculate as to whether or not the "extent of use" was more than zero. Moreover, this vague averment is coupled with the report of the Provider indicating that there is currently no website referenced by the at issue domain name. According to the Complainant, if there is "use" then it is via a website; if there is no website, do we then find that there is no use?
The Complainant in a UDRP proceeding if it is to prevail, must at a minimum clearly and unambiguously plead facts, which if taken as true, are sufficient to establish each of the elements which are required by the Policy to allow a domain name to be transferred.
It should be a simple matter for a Complainant, in a straightforward and unambiguous manner, to allege an actual "bad faith use" and at least some of the specifics of such "use" of the "parkerorings.com" domain name by the Respondant, if it is in fact aware of such use of the domain name. It has not done so. It merely states a bald conclusion which is premised on, but not indicative of, the at-issue domain name being used in bad faith by Miller. The Panel cannot speculate as to whether this material omission in the Complaint was because of the lack of a basis in fact, or resulted simply from inarticulate draftsmanship. While the Panel may have broad latitude to view the Complainant's presentation in a favorable light, it cannot augment the Complaint to include necessary elements which were, for whatever reason, not included by the Complainant.
Complainant Parker has failed to unambiguously allege sufficient facts which indicate that Respondent has actually "used" the at-issue domain name in "bad faith." The Policy necessitates some "bad faith use" pursuant to paragraph 4(a)(3). Therefore, the Panel denies Complaint's request for transfer, but does so without prejudice to re-filing.
Date: September 13, 2000, San Diego, CA
(s) Paul Michael DeCicco