Oceaneering International, Inc. v. Adeleke Adeyemi, Yemlat Global Concepts
Claim Number: FA1509001639293
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Okin Goldsmith of McCarter & English, LLP, New Jersey, USA. Respondent is Adeleke Adeyemi, Yemlat Global Concepts (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oceaneeringdrilling.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 24, 2015; the Forum received payment on September 24, 2015.
On September 25, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <oceaneeringdrilling.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2015 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@oceaneeringdrilling.net. Also on September 25, 2015, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1. Complainant, Oceaneering International Inc., has rights in the OCEANEERING mark through multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 983,504, registered May 7, 1974). Respondent’s disputed <oceaneeringdrilling.net> domain name is confusingly similar to Complainant’s OCEANEERING mark because it merely adds the generic top-level domain (“gTLD”) “.net,” and the term “drilling,” which is descriptive of Complainant’s business.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent, through WHOIS information related to the disputed domain name and a lack of information to the contrary, does not appear to be commonly known by the disputed domain name. Further, Respondent is using the disputed domain name to attempt to pass itself off as Complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Respondent has registered and is using the disputed domain name in bad faith. Respondent registered the domain to confuse and attract internet users, presumably for commercial profit. Further, Respondent’s passing off behavior demonstrates bad faith. Additionally, Complainant’s longstanding trademark registrations and Respondent’s use of the disputed domain name demonstrate that Respondent had knowledge of Complainant’s rights in the OCEANEERING mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision
of engineered products and engineering services, particularly in the offshore oil and gas industry.
2. Complainant, Oceaneering International Inc., has rights in the OCEANEERING mark through multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 983,504, registered May 7, 1974).
3. The disputed domain name was registered on May 8, 2015.
4. Respondent is using the disputed domain name to attempt to pass itself off as Complainant by promoting similar ocean drilling services to those of Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant submits that it has rights in the OCEANEERING mark through multiple registrations of the mark with the USPTO (e.g., Reg. No. 983,504, registered May 7, 1974). Panels routinely find that registration of a mark with the USPTO demonstrates rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant’s registration of the OCEANEERING mark demonstrates its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OCEANEERING mark. Complainant submits that Respondent’s disputed <oceaneeringdrilling.net> domain name is confusingly similar to the OCEANEERING mark in which Complainant claims to have rights. The disputed domain includes the entire OCEANEERING mark, adds the descriptive word “drilling,” and the gTLD “.net.” Panels have held that the addition of the gTLD “.net” is not relevant to a confusing similarity analysis. See Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to the complainant’s famous NIKE mark). Descriptive terms have also been held no to differentiate a domain name from a mark particularly where the term describes the business of the owner of the mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel thus finds that the disputed <oceaneeringdrilling.net> domain name is confusingly similar to the OCEANEERING mark for purposes of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s OCEANEERING trademark and to use it in its domain name, adding only the generic word “drilling”;
(b) Respondent is using the disputed domain name to attempt to pass itself off as Complainant.
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. To support this assertion, Complainant first argues that Respondent has not been commonly known by the disputed domain name. Indeed, WHOIS information lists the registrant of the domain as, “Adeleke Adeyemi,” of the organization “Yemlat Global Concepts,” neither of which resembles the disputed domain name. See Compl., at Att. Annex 1. Additionally, Respondent has not been authorized or licensed by Complainant to use the OCEANEERING mark. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information in the record that indicates the opposite. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore holds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii);
(e) Complainant also submits that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to be using the disputed domain name to promote similar ocean drilling services to those of Complainant using pictures taken from Complainant’s website and using Complainant’s marks. See Compl., at Att. Annex 6, & 8. It also appears to have taken content from Complainant’s website and used it on its own website. The picture on both Respondent’s disputed domain name and Complainant’s website <oceaneering.com> show the same remote operated vehicle with the OCEANEERING mark on its side. See Id. Panels have held that a respondent’s use of a disputed domain name to attempt to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). The Panel therefore finds that Respondent attempted to pass itself off as Complainant and thus has not used the disputed domain name within the parameters of Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent has registered and is using the disputed domain name in bad faith. In support of this claim Complainant submits that Respondent’s use of the domain name will deceive others into believing that Respondent is affiliated with Complainant. Panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent used a complainant’s mark to attract users to its commercial website. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). As the Panel determines that Respondent registered the disputed domain name to divert internet users seeking Complainant’s legitimate website and to profit therefrom, it finds that Respondent has used the domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s passing off behavior demonstrates bad faith. Again, Respondent appears to be using the disputed domain name to promote similar ocean drilling services to those of Complainant using pictures taken from Complainant’s website which include Complainant’s mark. It also appears to have taken content from Complainant’s website and used it on its own website. See Compl., at Att. Annex 6, & 8. Additionally the OCEANEERING DRILLING COMPANY, LLC which the disputed domain name purports to represent does not appear to exist. See Compl., at Att. Annex 10. Panels have found that a respondent attempting to misrepresent itself as a complainant has acted in bad faith. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As the Panel find that Respondent is attempting to pass itself off as Complainant it finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant’s longstanding trademark registrations and Respondent’s use of the disputed domain name demonstrate that Respondent had knowledge of Complainant’s rights in the OCEANEERING mark at the time of registration.
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the OCEANEERING mark. Complainant argues that its longstanding trademark registrations and Respondent’s use of the disputed domain name indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the OCEANEERING mark and the manner in which it has been used, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oceaneeringdrilling.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 28, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page