Hess Corporation v. VistaPrint Technologies Ltd
Claim Number: FA1512001651482
Complainant is Hess Corporation (“Complainant”), represented by Paul J. Reilly of Baker Botts L.L.P., New York, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerada-hess-ltd.com>, registered with Tucows Domains Inc.
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 Forum electronically on December 8, 2015; the Forum received payment on December 8, 2015.
On December 9, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <amerada-hess-ltd.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 December 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@amerada-hess-ltd.com. Also on December 10, 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 January 4, 2016, 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" 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 uses the AMERADA HESS mark in connection with its business in the exploration and production of crude oil and natural gas around the world. Complainant owns the mark through numerous trademark registrations around the world, including with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1496484, registered December 28, 2000). The <amerada-hess-ltd.com> domain name is confusingly similar to Complainant’s mark, because Respondent merely adds hyphenation between the words of the mark and adds the generic abbreviation “ltd.” Additionally, Respondent has attached the generic top-level domain (“gTLD”) “.com,” which is of no consequence under the Policy.
Respondent lacks rights or legitimate interests in the <amerada-hess-ltd.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has failed to make any active use of the disputed domain name.
Respondent has registered and is using the <amerada-hess-ltd.com> domain name in bad faith. Respondent has failed to make any active use of the disputed domain name, which demonstrates bad faith. Further, due to Complainant’s widespread use of its mark and the fame of the company, Respondent must have had actual and/or constructive knowledge of Complainant and its rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Hess Corporation, uses the AMERADA HESS mark in connection with its business in the exploration and production of crude oil and natural gas around the world. Complainant owns the mark through numerous trademark registrations around the world, including with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 1496484, registered December 28, 2000). The <amerada-hess-ltd.com> domain name is confusingly similar to Complainant’s mark.
Respondent, VistaPrint Technologies Ltd, registered the <amerada-hess-ltd.com> domain name on June 18, 2015. Respondent has failed to make any active use of the domain name.
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(f), 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.”).
Complainant owns rights in the AMERADA HESS mark under Policy ¶ 4(a)(i) through numerous trademark registrations around the world, including with China’s SAIC. See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <amerada-hess-ltd.com> domain name is confusingly similar to Complainant’s AMERADA HESS mark under Policy ¶ 4(a)(i). Respondent has simply added hyphens to the mark, the generic abbreviation “ltd,” and the gTLD “.com.”
Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not licensed or authorized Respondent to use Complainant’s mark. The WHOIS information for the <amerada-hess-ltd.com> domain name lists “VistaPrint Technologies Ltd” as registrant. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the <amerada-hess-ltd.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Respondent has failed to make any active use of the disputed domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent has failed to make any active use of the <amerada-hess-ltd.com> domain name which shows bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Respondent had actual knowledge of Complainant and its rights in the AMERADA HESS mark when it registered the <amerada-hess-ltd.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <amerada-hess-ltd.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 16, 2016
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