Oceaneering International, Inc. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1505001620300
Complainant is Oceaneering International, Inc. ("Complainant"), represented by Susan Okin Goldsmith, New Jersey, USA. Respondent is Lisa Katz / Domain Protection LLC ("Respondent"), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegeofoceaneering.com>, registered with FABULOUS.COM PTY LTD.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2015; the Forum received payment on May 19, 2015.
On July 13, 2015, FABULOUS.COM PTY LTD. confirmed by email to the Forum that the <collegeofoceaneering.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 July 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@collegeofoceaneering.com. Also on July 16, 2015, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 6, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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. 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
Complainant is a publicly traded global provider of engineered products and engineering services, particularly in the offshore oil and gas industry. Complainant also serves the defense, aerospace and entertainment industries. Complainant employed approximately 12,400 people in 2014, and had total revenues of $3.65 billion. Complainant holds various trademark registrations for OCEANEERING in the form of both word and design marks, in the United States and other jurisdictions. Complainant has used the OCEANEERING marks continuously since at least as early as 1970.
Complainant contends that the disputed domain name <collegeofoceaneering.com> is confusingly similar to its OCEANEERING mark; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. In support thereof, Complainant states that the disputed domain name was acquired by Respondent via transfer from one or two previous registrants following the dissolution of a court-ordered receivership in February or March of 2014. Complainant states that neither Respondent nor the previous registrants has any connection or affiliation with Complainant; and that neither is commonly known by the disputed domain name, and neither has been licensed or otherwise authorized to use Complainant's mark. Complainant states further that the domain name has been used to display pay-per-click links to engineering resources and services, and to distribute malware using false and likely fraudulent virus warnings. Complainant alleges that Respondent and the previous registrants are "known cybersquatters" who own thousands of domain names and have lost numerous proceedings under the Policy.
Complainant alleges that Respondent and the previous registrants had at least constructive knowledge of Complainant's mark when the domain name was first registered on June 3, 2005, long after Complainant's mark was first registered. Complainant alleges that Respondent continued to misuse the domain name after receiving correspondence from Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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 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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <collegeofoceaneering.com> is identical to Complainant's registered trademark OCEANEERING, but for the addition of the generic term "college of" and the ".com" top-level domain. These changes are insufficient to distinguish the domain name from Complainant's mark. See, e.g., Topcon Positioning Systems, Inc. v. Jason W. Evans, D2015-0708 (WIPO June 24, 2015) (finding <topconuniversity.com> confusingly similar to TOPCON);
Path Media Holdings, LLC v. Vance Van Patten, FA 1435698 (Nat. Arb. Forum May 3, 2012) (finding <collegegirlsgowild.net> confusingly similar to GIRLS GONE WILD); Oceaneering International, Inc. v. Agents Office / Management, FA 1421242 (Nat. Arb. Forum Jan. 25, 2012) (finding <oceaneeringgroup.com> confusingly similar to OCEANEERING). The Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark, and its only apparent use has been for websites comprised of pay-per-click links and fraudulent virus warnings. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Oceaneering International, Inc. v. Online Management, FA 1528891 (Nat. Arb. Forum Dec. 18, 2013) (use of domain name to host pay-per-click links relating to complainant's industry); Twitter, Inc. v. Domain Admin, FA 1607451 (Nat. Arb. Forum Apr. 2, 2015) (use of domain name as vehicle for malware). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and
has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith
may be shown by evidence that "by using the domain name, [Respondent]
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."
Respondent's acquisition of a domain name that incorporates Complainant's mark, together with the use of that domain name to display pay-per-click links related to Complainant's industry and to distribute malware, is indicative of bad faith under the Policy. See, e.g., Oceaneering International, Inc. v. Online Management, supra; Twitter, Inc. v. Domain Admin, supra.
Complainant claims Respondent acquired the domain name with at least constructive knowledge of Complainant's mark. Constructive notice is insufficient to support a finding that the domain name was registered in bad faith. See, e.g., Inova Health System Foundation v. Adel Kebaish, FA 1575155 (Nat. Arb. Forum Sept. 23, 2014). Nonetheless, based upon the available circumstantial evidence, the Panel considers it more likely than not that Respondent had actual knowledge of Complainant's mark upon acquiring the domain name, and that the acquisition and subsequent use of the domain name was targeted at Complainant or its mark. Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <collegeofoceaneering.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 7, 2015
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