ADMINISTRATIVE PANEL DECISION

Under the ICANN Uniform Domain Name Dispute Resolution


 
Complainant: PARKER HANNIFIN CORPORATION
Respondent: EAST BAY WEBSITE COMPANY
Case Number: AF-0587
Contested Domain Name: parkerorings.com
Panel Member: Houston Putnam Lowry
 

 

1. Parties and Contested Domain Name

The Complainant in this proceeding is Parker Hannifin Corporation ("Parker"), an Ohio corporation, of 6035 Parkland Boulevard, Cleveland, OH 44124-4141, U.S.A.

No response has been filed. The registrant of the domain name and nominal respondent is East Bay Website Company ("East Bay") of 7020A Commerce Drive, Pleasanton, CA, 94588, USA.

The subject domain name is PARKERORINGS.COM and the registrar is Network Solutions, Inc.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution's Website on November 10, 2000. The hardcopy of the Complaint Form and annexes were received on November 13, 2000. Payment was received on November 21, 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 essential contact information for Respondent;

- Verify if the contested Domain Name resolved to an active Web page;

- Verify if the Complaint was administratively compliant.

This inquiry lead the Clerk 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 obtain confirmation and a copy of the Registration Agreement on November 10, 2000. The requested information was received on November 14, 2000.

The Clerk 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 forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on November 22, 2000. This date is the official commencement date of the administrative proceeding.

Only the email to the POSTMASTER@PARKERORINGS.COM was returned 'undeliverable'. All the faxes were successful.

The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the respondent. According to the Canada Post tracking system, all were delivered.

The Respondent did not submit a Response neither via eResolution's website nor a signed version.

On December 15, 2000, the Clerk's Office contacted Mr. Houston Putnam Lowry, and requested that he acts as panelist in this case.

On December 15, 2000, to Mr. Houston Putnam Lowry, accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On December 18, 2000, the Clerk's Office forwarded a user name and a password to Mr. Houston Putnam Lowry, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.

On December 18, 2000, the parties were notified that Mr. Houston Putnam Lowry had been appointed and that a decision was to be, save exceptional circumstances, handed down on January 2, 2000.

On December 20, 2000, Mr. Houston Putnam Lowry requested additional information from the parties. The deadline for receiving this information was the close of business on December 26, 2000. Joe Davis of Miller Seals responded on December 21, 2000.1 While suggesting something was "afoot",2 Mr. Davis (although a representative of the real party in interest) did not give the Panel any facts to deal with.

Parker responded on December 21, 2000 with a copy of the trademark license agreement between Parker and Parker Intangibles, Inc. This was transmitted to the Panel on December 22, 2000.

3. Factual Background

Complainant 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 Intangibles Inc. is the registered owner in the United States of the mark "PARKER," Reg. No. 768,773 (copy attached to the complaint), issued April 28, 1964, and alleging a date of first use in commerce in 1926. On or about December 21, 1988, Parker Intangibles, Inc. non-exclusively licensed trademark No. 768,773, inter alia, to Complainant Parker. As part of that agreement, Complainant Parker must use reasonable efforts to enforce the licensed trademarks.

East Bay, the named registrant of the PARKERORINGS.COM domain, is a website developer who was engaged by the real party in interest, Miller Seals ("Miller") of 7020A Commerce Drive, Pleasanton, CA 94588, to secure several domain names to establish a website on behalf of Miller. East Bay registered the domain names PARKERORINGS.COM and PARKERSEALS.COM on December 4, 1998. Joe Davis of Miller Seals was listed as the billing contact under both domain name registrations.

Miller is an independent distributor of o-rings and other seal products which directly compete with o-rings and other seal products sold by the Complainant Parker. Miller had been an authorized distributor of Parker o-rings and seal products, but that authorization was revoked several years prior to the registration of the PARKERORINGS.COM and PARKERSEALS.COM domains.

Miller currently neither stocks nor sells Parker o-rings or any Parker seal products. Miller was neither stocking nor selling Parker o-rings nor any Parker seal products at that time of its registration of the PARKERORINGS.COM domain.

The Panel notes a prior proceeding (AF00287) between the parties was denied without prejudice to re-assert this claim.

4. Parties' Contentions

Parker contends East Bay registered the PARKERORINGS.COM domain name on behalf of Miller. Parker contends Miller was acting in violation of the Uniform Dispute Resolution Policy because Miller was a competitor infringing on the PARKER trademark. While not a competitor, Parker contends East Bay's registration of the PARKERORINGS.COM domain name also violated the Uniform Dispute Resolution Policy.

Respondent has failed to respond to any of the allegations. This means Complainant's allegations are uncontested. A complainant still needs to make out a prima facie case because panelists do not render default awards simply because a respondent fails to respond, ICANN Rule 5(ix)(e).

5. Discussion and Findings

Parker is proceeding pro se in this matter. While reviewing the complaint, there was one major inconsistency apparent to the Panelist. It was not clear why Parker could rely upon a United States trademark registered to Parker Intangibles, Inc. (a separate Delaware corporation). Rather than assume what the allegations were or dismiss the case for failure to state sufficient facts to justify relief,3 the Panelist requested further information from the parties pursuant to ICANN Rule 12.

While at least one other Panelist has discouraged such procedures on the grounds a complainant should bear the burden of proving its case,4 this Panelist has followed this procedure before5 and other panelists have implicitly agreed this is the better view.6 The dispute resolution mechanism is better served by allowing a pro se party (or parties) to respond to a panelist's concerns because it promotes efficiency, eliminating the need for a subsequent case (in this case, a third case on the same facts) and allowing the parties a fair opportunity to present their case. The subsequent information made it clear Complainant Parker was entitled to enforce the Parker trademark registered by Parker Intangibles, Inc.

Former distributors have sometimes registered a domain name incorporating the trademark of their former principal.7 From that perspective, there is nothing unusual about this case.

In order to obtain relief under the Uniform Domain Name Dispute Resolution Policy adopted on August 26, 1999 (and effective January 3, 2000 under the facts of this case because the registrar is Network Solutions, Inc.), a complaining party must prove ALL of the following to be entitled to relief in this process:8

(i) the respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent's domain name has been registered and is being used in bad faith.

A. The Respondent's Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights.

The domain name is PARKERORINGS.COM, which is substantially similar to the PARKER trademark. Parker and East Bay's client (Miller) are in the same business (the "O-ring" business), meaning confusion is likely.

B. The Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Name.

None of the standard indicia demonstrating rights to a domain name described in the ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(c) appear to be present in this case:

(i) before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) respondent (as an individual, business, or other organization) have been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or

(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panelist was unable to find any other factors which show Respondent has any rights or legitimate interest to the PARKERORINGS.COM domain name. Respondent's silence suggests Respondent was also unable to demonstrate any factors which show a right or legitimate interest.

C. The Respondent's Domain Name Has Been Registered And Is Being Used In Bad Faith.

Under ICANN Uniform Domain Name Dispute Resolution Policy Paragraph 4(b), the following non-exclusive factors indicate registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of respondent's web site or location or of a product or service on respondent's web site or location.

While Parker and East Bay are not competitors, Parker and East Bay's client (Miller) are clearly competitors. A nominal respondent will not shield a real party in interest from the jurisdiction of a panel under the Uniform Dispute Resolution Policy.

A number of panelists have discussed the requirement that a domain name must not only be registered in based faith, but it also must be used in bad faith. A domain name may be used in any of the following ways (and can be used more than one way at the same time):

1. A location for a web site (and all that entails, ranging from the publication of information to electronic commerce).

2. An address for email.9

3. To prevent another from using the domain name.

"Bad faith" is defined in Black's Law Dictionary 7th edition at page 134 as: "1. Dishonesty of belief or purpose..". In Halsey v. Brotherhood (1881), 19 Ch. D. 386 Lord Coleridge L.C.J. in determining whether there was evidence of mala fides stated that the task of the Court was to consider "whether there is anything to show that what the defendant stated was stated without reasonable and probable cause".

While it may be easy to prove a domain name was registered in bad faith, it is sometimes hard to prove it is being used in bad faith. However, this Panelist believes the Uniform Dispute Resolution Policy means simply that the domain name is being wrongfully retained by the registrant (otherwise the panel could not offer an effective remedy). A wrongful registrant should not be able to escape the jurisdiction of a panel simply because the domain name is being used only for email (or simply to prevent another from using the domain name). A number of other panelists seem to agree with this interpretation.10

Registering multiple domain names incorporating a trademark has been held to be evidence of bad faith.11 Registering multiple domain names to prevent a trademark holder from using a trademark is per se bad faith, Uniform Dispute Resolution Policy Paragraph 4(b)(ii). That is what happened here. Parker has proven bad faith adequately.

6. Conclusions

For the foregoing reasons, the PARKERORINGS.COM domain name shall be transferred to Parker Hannifin Corporation.

7. Signature

Dated at Meriden, Connecticut USA on this 22nd day of December, 2000

(s) Houston Putnam Lowry
Presiding Panelist

 

1. Dear Houston Putnam Lowry,
My response is that Parker Hannifinn behaves like many large international company's [sic] that pick and choose what laws benefit their actions, and ignore the laws that inhibit there [sic] actions. Also, you may note that Parker Hanniffin stole my domain name "parkerseals.com", and I don't have the financial means to fight such a large corporation.
If you have any other questions don't hesitate to email.
Regards,
Joe Davis
2. To quote Sherlock Holmes.
3. Such as what happended in Parker Hannifin Corporation v. East Bay Website Company, AF-00287.
4. GA Modefine v. Sparco P/L, WIPO D2000-0419. Even in that case, the panel indicated Rule 12 could be used when an issue of fact was not entirely clear.
5. Agent Host Co v Intellisolve Limited, WIPO D2000-0179;
6. Astro-Med, Inc. v. Merry Christmas Everyone! and B. Evans, WIPO D2000-0072; Plaza Operating Partners, Ltd. V. Pop Data Technologies, Inc. and Joseph Pillus, WIPO D2000-0166; Flammarion SA v. Lee Ha-won, WIPO D2000-0132; Yahoo! Inc. v. M & A Enterprises, WIPO D2000-0748; Netcentives Inc. v. B W Brody Company, WIPO D2000-0672; Wembley National Stadium Limited v. Bob Thomson [aka Wembleystadium.net], WIPO D2000-1233; Shopping.com v. Internet Action Consulting, WIPO D2000-0439; 3636275 Canada, dba eResolution v. eResolution.com, WIPO D2000-0110; Medisite S.A.R.L. v. Intellisolve Limited, WIPO D2000-0179; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO D2000-0075; and Football Club des Girondins de Bordeaux v. Annie Arr, WIPO D2000-0149.
7. Hydraroll Limited v. Morgan Corporation, NAF-0002000094108; Infinity2, Incorporated v. Total Health & Wellness, FA0005000094867; Telular Corporation v. Smart Call, FA0005000094899; The Stanley Works v. Phil O'Neil, FA0003000094233; and so on.
8. ICANN Uniform Dispute Resolution Policy Paragraph 4(a).
9. See, for example, Magic Software Enterprises v. Evergreen Technology Corp., WIPO D-2000-0746.
10. Telstra Corp. v. Nuclear Marshmallows, WIPO D2000-0003; MTR Software v. Esther Cao, AF-0415; Coty Cosmetics v. Jaguar Ltd, AF-0416; JVC America v. Damian Macafee, CPR-007; and Solomon R. Guggenheim Foundation v. Jesus J. Ruiz Zuazu, FA0008000095319.
11. United Negro College Fund, Inc. (UNCF) v. Lynn Tolliver Jr./Bobby Rush, FA0008000095412; Integrity Systems, Inc. v. Integrity Systems, FA0008000095498; Gordon Rush & Co. v. Ramon Rono, FA0008000095495; and Pacific Investment Management Company v. Alex Szabo, FA0008000095614.

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