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Generic Top Level Domain Name (gTLD) Decisions |
Willbros USA, Inc. v. R Smith
Claim
Number: FA0312000218916
Complainant is Willbros USA, Inc., Houston, TX
(“Complainant”) represented by Mark
Tidwell, of Jackson Walker LLP, 112 E. Pecan Street, Suite 2100, San
Antonio, TX 78205. Respondent is R Smith, 1 Oluwole Dr., Lagos LA 000,
Nigeria (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wilbrosoilcox.com>, registered with Address
Creation.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 11, 2003; the
Forum received a hard copy of the
Complaint on December 15, 2003.
On
December 22, 2003, Address Creation confirmed by e-mail to the Forum that the
domain name <wilbrosoilcox.com> is registered with Address
Creation and that Respondent is the current registrant of the name. Address
Creation has verified that
Respondent is bound by the Address Creation registration
agreement and has thereby agreed to resolve domain-name disputes brought
by third
parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
December 22, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of January 12, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@wilbrosoilcox.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
January 15, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) 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."
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wilbrosoilcox.com>
domain name is confusingly similar to Complainant’s WILLBROS mark.
2. Respondent does not have any rights or
legitimate interests in the <wilbrosoilcox.com> domain name.
3. Respondent registered and used the <wilbrosoilcox.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a pending trademark application for its WILLBROS mark, filed with the
United States Patent and Trademark Office
(“USPTO”) on November 24, 2003 (Ser.
No. 78/332,519). Complainant has used
its WILLBROS mark since 1915 for goods and services relating primarily to
engineering and construction services
for oil and gas production and pipeline
systems. Complainant allegedly has over
400 clients in 55 different countries, including Nigeria. In fact, Complainant has provided services
in Nigeria under its WILLBROS mark since 1962.
Accordingly, Complainant’s WILLBROS mark enjoys favorable public
acceptance and recognition, and is a valuable asset to Complainant.
Complainant also
owns and operates a website located at <willbros.com>.
Respondent
registered the disputed domain name on April 9, 2003. Respondent uses the domain name to offer services in the oil and
gas industry.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
common law rights in the WILLBROS mark through continuous use in commerce since
1915 and has advanced sufficient evidence
to support the finding of secondary
meaning associated with the mark.
Complainant also has a pending trademark application for its WILLBROS
mark. See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary
meaning was
established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA
142318 (Nat. Arb. Forum March 13, 2003) (holding that Complainant established
rights in the descriptive RESTORATION GLASS mark
through proof of secondary
meaning associated with the mark); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered
by a government authority or agency for such rights
to exist. Rights in the mark can be
established by pending trademark applications).
The disputed domain name contains Complainant’s WILLBROS mark nearly in
its entirety, but merely omits an “L” from the mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000)
(finding the domain name <hewlitpackard.com> to be identical or
confusingly similar
to Complainant’s HEWLETT-PACKARD mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to Complainant’s
STATE
FARM mark); see also Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks).
In addition, Respondent has added the word “oil” to the name, which
describes Complainant’s services and the industry that Complainant
operates
in.
Space
Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with
a
generic term that has an obvious relationship to Complainant’s business); see
also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (“Respondent does not by
adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying
PG&E mark held by
Complainant”); see also Slep-Tone
Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum
Mar. 13, 2000) (“likelihood of confusion is further increased by the fact that
the Respondent and [Complainant]
operate within the same industry”).
In light of the foregoing, the addition of the word “cox” fails to
distinguish the name and nature of the disputed domain name from
Complainant’s
respected mark. See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term).
Policy ¶ 4(a)(i)
is established.
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods or services pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii) because it is intentionally
diverting potential
customers of Complainant to its own website that offers
competing oil-related services. See
Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that
compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that Respondent, as a competitor of Complainant, had no rights
or legitimate interests
in a domain name that utilized Complainant’s mark for
its competing website); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that
Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods).
Additionally,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known
by the mark).
Policy ¶
4(a)(ii) is established.
The
notoriety of Complainant’s mark is sufficient to infer that Respondent
reasonably should have been aware of Complainant’s rights
in the mark,
especially because it was involved in the same industry. Therefore, Respondent registered and used
the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal
presumption of bad faith, when Respondent reasonably should have been
aware of
Complainant’s trademarks, actually or constructively”); see also
Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse");
see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between Complainant’s mark and
the content advertised on Respondent’s
website was obvious, Respondent “must
have known about the Complainant’s mark when it registered the subject domain
name”).
Furthermore,
Respondent has registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii) because Respondent
uses the name in competition
with Complainant’s services, evidencing a strong likelihood that the name is
being used to attract Internet
users from Complainant’s competing
business. See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent
likely
registered the contested domain name with the intent to disrupt Complainant's
business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that
competes with Complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from Complainant's marks
suggests that Respondent,
Complainant’s competitor, registered the names
primarily for the purpose of disrupting Complainant's business).
Additionally,
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because Respondent
likely attracted Internet users to its
website in the hopes of stealing Complainant’s customers by causing confusion
with Complainant’s
mark. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website);
see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue
to resolve to a website offering similar services as
Complainant and were offered to the same market).
Policy ¶
4(a)(iii) is established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wilbrosoilcox.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 29, 2004
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