Api-globaltrade.com

The timeline behind api-globaltrade.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION American Petroleum Institute v. Thomas Verbaet / Thomas Verbaet & Partners Claim Number: FA2111001972040 PARTIES Complainant is American Petroleum Institute (“Complainant”), represented by Kelli A. Ovies of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Thomas Verbaet / Thomas Verbaet & Partners (“Respondent”), represented by Petillion, Noesen, Belgium. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <api-globaltrade.com>, registered with OVH sas. PANEL 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. Dennis A. Foster as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the Forum electronically on November 4, 2021; the Forum received payment on November 4, 2021. On November 5, 2021, OVH sas confirmed by e-mail to the Forum that the <api-globaltrade.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 November 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 2021 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@api-globaltrade.com. Also on November 9, 2021, 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. A timely Response was received and determined to be complete on December 3, 2021. On December 14, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Dennis A. Foster 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant - Complainant is the largest United States trade association that represents United States oil and natural gas companies on an international basis. With respect to that representation, Complainant has registered the trademark and service mark, API, with the United States Patent and Trademark Office (“USPTO”). Complainant has used that mark since at least 1924, and conducts some of its services through its <api.org> domain name. - The disputed domain name, <api-globaltrade.com>, is confusingly similar to Complainant’s API mark. The mark is completely included in the disputed domain name, with the mere additions of a hyphen, a descriptive term, “globaltrade,” and the “.com” generic top-level domain (“gTLD”). None of those additions prevents the disputed domain name from being confusingly simlar to Complainant’s mark. - Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has no connection or affiliation with Complainant, who has not authorized or licensed Respondent to use its API mark in the disputed domain name or otherwise. Respondent is not commonly known by the disputed domain name. Moreover, Respondent uses the disputed domain name illegitimately for a website that offers, among other things, industrial equipment for the oil and gas industry, which competes directly with products produced and sold by companies that Complainant represents. - Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name with constructive knowledge of Complainant’s rights in its API mark. Furthermore, due to likely confusion between the disputed domain name and that mark, Respondent’s intent is to gain commercially through the sale of goods and services offered on the website that Respondent attached to the disputed domain name. B. Respondent - Respondent concedes that Complainant has registered rights in the United States for the acronym mark API. - Respondent has rights and legitimate interests in the disputed domain name. Respondent uses the disputed domain name in connection with import and export services involving automotive, textile and/or consumer eletronics, all of which are related to Respondent’s launch of its company, API Global Trade Ltd., incorported in Hong Kong since April 17, 2018. This use by Respondent is unrelated to Complainant’s activities, which involve the promotion of safety within the United States oil and natural gas industry. - Complainant’s mark, API, consists of a generic acronym that can be associated with many entities, including Respondent’s company, where API stands for “Asia Pacific International.” Nothing on Respondent's website connected to the disputed domain name refers to Complainant's use of the API term, and Respondent has no business presence in the United States. Moreover, the terms “global” and “trade” do not refer to Complainant, its services or even the oil and gas industry. - Respondent did not register and does not use the disputed domain name in bad faith. Respondent was unaware of Complainant’s generic acronym API mark, which is not well known throughout the world. Respondent uses the disputed domain name for a bona fide offering of goods and services, without the intent to attact internet users by creating a likelihood of confusion between the name and Complainant’s mark. - Complainant has engaged in reverse domain name hijacking (“RDNH”), as the Complaint was brought in bad faith based upon a weak generic acronym. FINDINGS Complainant is an organization based in the United States that promotes the interests of United States oil and natural gas companies throughout the world. Since at least 1924, Complainant has conducted its activities under its API trademark and service mark, which have been registered with the USPTO (i.e., Reg. 679,642, registered June 2, 1959; and Reg. 840,642, registered Dec. 12, 1967, respectively). Respondent is the owner of the disputed domain name, <api-globaltrade.com>, which was registered on December 19, 2017. Respondent has attached the disputed domain name to its website for the purpose of selling internationally various goods and services, including oil and gas industrial equipment. 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 prove each of the following three elements in order 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. Identical and/or Confusingly Similar Complainant has presented the Panel with clear evidence of a USPTO registration for the API mark, and thus the Panel finds that Complainant has sufficient rights in that mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) (“Complainant’s ownership of a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (“The Panel finds that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).”). The disputed domain name, <api-globaltrade.com>, is not identical to Complainant’s API mark. In addition to that mark, the disputed domain name includes a hyphen, the descriptive term “global trade,” and the “.com” gTLD. However, the Panel finds that these additions are not sufficient to distinguish the disputed domain name from the mark. The hyphen offers minimal distinction. The added gTLD is of no relevance in the comparison because that kind of suffix is required of all domain names. Finally, prior UDRP panels have determined that simple descriptive terms like "global trade" do not offer material distinction when attached to a clear and valid mark. The latter is particularly true when that descriptive term applies to the services offered by a complainant under its mark, as in this case, where Complainant's promotion of U.S. oil and natural gas production does involve the global distribution (trade) of those resources by U.S. companies. As a result, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. See UBS AG v. Jone Key, FA 1705029 (Forum Jan. 10, 2017) (finding <ubs-global.org> to be confusingly similar to the UBS mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“The addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a complainant’s mark.”). Accordingly, the Panel finds that Complainant has proved the first element required under the Policy. Rights or Legitimate Interests In UDRP proceedings, if Complainant puts forth a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, then Respondent has the burden to present evidence that it does possess such rights or legitimate interests. See 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”). In the case at hand, Complainant has convinced the Panel that the disputed domain name is confusingly similar to Complainant’s valid mark, and Complainant has contended clearly that it is neither affiliated with Respondent nor did it grant authorization or license for Respondent to use that mark for any purpose. Therefore, the Panel finds that Complainant has established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Respondent contends that it does business under its company name API Global Trade Ltd. As that company, by Respondent’s own admission, was incorporated relatively recently in 2018, the Panel finds that Respondent cannot truthfully assert, given such a short time frame, that its company is now commonly known as the disputed domain name, thus negating the applicability of Policy ¶ 4(c)(ii) to this case. However, Respondent does argue that it should be found to have rights or legitimate interests in the disputed domain name based on Policy ¶ 4(c)(i). In that vein, Respondent claims to use the disputed domain name for its offerings of import and export services under the website attached to that name that carries Respondent’s corporate name, API Global Trade Ltd. Complainant asserts that those services include offering for sale equipment meant for oil and natural gas production, which competes directly with Complainant’s offerings. However, the Panel notes that Respondent’s offerings, which include many items other than those related to oil and gas extraction, are marketed for profit, whereas Complainant, as an advisory noncommercial orgainization, does not directly sell oil or natural gas products. Therefore, the Panel perceives no direct competition. Furthermore, the Panel does not detect that Respondent is using Complainant’s mark illegitimately to lure internet users to its website. Complainant’s mark, API, a three-letter acronym, is not terribly distinctive and, as Respondent contends, could represent many entities and/or phrases. Moreover, it is not nearly as well-known as some other three-letter company acronyms such as IBM, BMW, BBC, etc. Thus, the Panel concludes that Respondent is entitled under Policy ¶ 4(c)(i) to sell legitimately a variety of goods under the disputed domain name since that name corresponds directly to Respondent’s existing company name and the sale of those goods internationally corresponds directly to both names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.10.2 (“For a respondent to have rights or legitimate interests in a domain name comprising an acronym, the respondent’s evidence supporting its explanation for its registration (and any use) of the domain name should indicate a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark.”). From the evidence submitted, Respondent does not appear to have engaged in much business under the disputed domai name. However, Policy ¶ 4(c)(i) allows that Respondent may merely submit evidence of “demonstrable preparations” to use the disputed domain name for “bona fide offerings of goods and services,” and Respondent has clearly crossed that threshold. As a result, the Panel believes that Respondent has rebutted Complainant’s above-reference prima facie case, and has established that it does have rights and legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has failed to establish the second element required under the Policy. Registration and Use in Bad Faith As the Panel has found that Complainant failed to prove that Respondent had no rights or legitimate interests in the disputed domain name, and the Policy requires all elements to be proved for the Complainant to succeed in this proceeding, the Panel need not consider whether the disputed domain name was registered or is being used in bad faith. See J.D.M. Software B.V. v. Robert Mauro., D2017-1182 (Wipo Aug. 23, 2017) (“In view of the Panel’s findings under the second limb of the Policy, no good purpose would be served by consideration of the third requirement under the Policy.”) Reverse Domain Name Hijacking Respondent has requested that the Panel consider whether Complainant has engaged in an attempt at RDNH. In undertaking such a consideration, the Panel first notes that Complainant succeeded in proving to the Panel’s satisfaction the first element required under the Policy. Moreover, in its contentions regarding the second element required under the Policy, Complainant had a pertinent rationale for contending that Respondent’s use of the disputed domain name treaded upon the primary area of commerce, i. e., oil and natural gas production, for which Complainant uses its valid API mark. While ultimately the Panel did not accept that rationale, largely because Respondent is engaged in for-profit commerce and Complainant is not, the Panel does not consider Complainant’s argument to have been frivolous. In the Panel’s view, the Policy is designed to address clear cases of abusive cybersquatting, and that is not the case here. See National Alliance for the Mentally Ill v. Mary Rae Fouts, FA 204074 (Forum Dec. 6, 2003) (“Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting.”); see also (The Thread.com, LLC v. Jeffrey S. Poploff, D2000-1470 (Wipo Jan. 5, 2001) (“...the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.”). Taking the foregoing into account, the Panel does not believe that it can fairly find Complainant has engaged in RDNH with respect to this filing under the Policy. DECISION Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <api-globaltrade.com> domain name REMAIN WITH Respondent. Dennis A. Foster, Panelist Dated: December 28, 2021 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.