Swagelok Company v Sonexo BV (Full Decision _Transfer)

Factual and Procedural Background

The dispute concerns the domain name registered as the Domain Name. The Complainant, Company A, is an Ohio corporation in the USA specialising in advanced fluid system products and services, holding an extensive worldwide portfolio of a registered trade-mark identical to the Domain Name. The Respondent, Company B, is an online publishing company based in the Netherlands that registered the Domain Name on 25th May 2014, specialising in buying and selling generic domain names and internet marketing.

The Complaint was lodged with the relevant authority on 11th May 2016 and validated the same day. Notifications were exchanged between the parties, with the Respondent filing a Response on 23rd May 2016 and the Complainant replying on 26th May 2016. Mediation commenced on 7th June 2016 but was unsuccessful, concluding on 21st June 2016. Subsequently, Company A paid the fee for an Expert Decision, and on 6th July 2016, Judge Lawless was appointed as the Expert to issue a decision by 27th July 2016. There were no outstanding procedural issues at the time of the decision.

Legal Issues Presented

1. Whether the Complainant has Rights in respect of a name or mark identical or similar to the Domain Name;
2. Whether the Domain Name, in the hands of the Respondent, constitutes an Abusive Registration under the applicable policy;
3. Whether the Domain Name was registered or used by the Respondent primarily to unfairly disrupt the Complainant’s business, cause confusion, or for other abusive purposes as defined by the policy;
4. Whether the Respondent has demonstrated legitimate use of the Domain Name to rebut a finding of Abusive Registration;
5. Whether the Domain Name should be transferred to the Complainant as a consequence of being found an Abusive Registration.

Arguments of the Parties

Complainant's Arguments

• The Domain Name is an Abusive Registration because it was registered to unfairly disrupt the Complainant’s business.
• The Respondent’s continued ownership causes confusion among the Complainant’s customers regarding source, affiliation, or sponsorship.
• The Respondent’s use of the Domain Name creates “Initial Interest Confusion”.
• The Domain Name was registered as a blocking registration against the Complainant’s trade-mark rights.
• The Respondent has attempted to sell the Domain Name for more than documented out-of-pocket costs.
• The Respondent has not demonstrated any legitimate use of the Domain Name.

Respondent's Arguments

• The Domain Name was registered for future development and planned website use.
• The Domain Name was not in use and thus could be registered by anyone.
• The Complainant’s trade-marks are insufficient to establish a superior interest in the Domain Name, and no evidence was provided that the trade-mark is used in trade.

Table of Precedents Cited

Court's Reasoning and Analysis

The Expert applied the Nominet Dispute Resolution Service (DRS) Policy, which requires the Complainant to prove on the balance of probabilities that it has rights in a name or mark identical or similar to the Domain Name and that the Domain Name is an Abusive Registration.

The Expert found that the Complainant’s trade-mark rights are well established worldwide, supported by extensive registrations and use, and that the Domain Name is identical to the Complainant’s mark (ignoring the ".co.uk" suffix).

The Expert examined the factors constituting Abusive Registration under the Policy, including registration for unfair disruption, blocking registrations, causing confusion, and attempts to profit from the Domain Name beyond documented costs.

Evidence showed that the Domain Name resolved to a parking page with links including the Complainant’s trade-mark terms, which could confuse users into believing there was an association with the Complainant. This use was attributable to the Respondent and disrupted the Complainant’s business by diverting potential customers and commercial opportunities.

The Expert considered the prominence and reputation of the Complainant’s mark as of the registration date and concluded the Domain Name was acquired with the purpose of unfairly disrupting the Complainant’s business, satisfying the relevant Policy provision.

Regarding confusion, the Expert found a real possibility of user confusion given the Domain Name’s association with the Complainant’s trade-mark and the nature of the landing page, satisfying the Policy’s confusion criterion.

The Expert noted the Respondent did not adequately rebut these factors, did not demonstrate legitimate use, and did not respond to certain allegations such as selling the Domain Name for profit.

The Expert clarified that trademark infringement is outside the scope of the Policy and that the Complainant retains the option to pursue such claims in court.

On balance, the Expert found the Domain Name to be an Abusive Registration under the Policy.

Holding and Implications

The Expert’s final decision is to ORDER THE TRANSFER OF THE DOMAIN NAME TO THE COMPLAINANT.

The direct effect of this decision is that control of the Domain Name will pass from the Respondent to the Complainant. No broader legal precedent is established, and the decision is confined to the facts and application of the Nominet DRS Policy in this dispute.