Schlumberger Limited, N.V. v. Nuno ramalho
Claim Number: FA1610001696501
Complainant is Schlumberger Limited, N.V. (“Complainant”), Texas, USA. Respondent is Nuno ramalho (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schlumbergerplc.com>, registered with GoDaddy.com, LLC.
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 October 3, 2016; the Forum received payment on October 3, 2016.
On October 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <schlumbergerplc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2016 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@schlumbergerplc.com. Also on October 4, 2016, 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 31, 2016 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant uses its SCHLUMBERGER mark in connection with the oil field services industry. Complainant has registered the SCHLUMBERGER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 842,600, registered Jan. 16, 1968), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Ex. 3. The <schlumbergerplc.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic term “plc” to the mark.
Respondent has no rights or legitimate interests in the domain name. Respondent does not identify itself or its business as “Schlumberger,” and Complainant has not licensed or consented to Respondent’s use of the SCHLUMBERGER mark. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services. Respondent’s domain name redirects Internet users to Complainant’s website, www.slb.com. Respondent also uses an e-mail address associated with the domain name to impersonate Complainant’s employees and retrieve personal and financial information from an employment placement company. See Compl., at Attached Ex. 7.
Respondent registered and is using the domain name in bad faith. First, Respondent uses an e-mail address associated with the domain name to phish for Internet users’ personal and financial information. Id. Second, Respondent’s domain name resolves to Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent company engaged in the oil field services industry.
2. Complainant has registered the SCHLUMBERGER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 842,600, registered Jan. 16, 1968 and it uses the trademark in its business.
3. Respondent registered the domain name on March 17, 2016.
4. The domain name redirects Internet users to Complainant’s website, www.slb.com. Respondent also uses an e-mail address associated with the domain name to impersonate Complainant’s employees and retrieve personal and financial information from an employment placement company.
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 (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 issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses its SCHLUMBERGER mark in connection with the oil field services industry. Complainant has registered the SCHLUMBERGER mark with the USPTO (e.g., Reg. No. 842,600, registered Jan. 16, 1968), which Complainant claims demonstrates its rights in the mark. See Compl., at Attached Ex. 3. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <schlumbergerplc.com> domain name is identical or confusingly similar to Complainant’s SCHLUMBERGER mark. Complainant contends that the <schlumbergerplc.com> domain name is confusingly similar to Complainant’s mark as it merely adds the generic term “plc” to the mark. That term indicates a “public limited company” in the United Kingdom. The Panel also notes that Respondent affixes the “.com” generic top-level domain (“gTLD”). Panels have held that these changes do not serve to distinguish a respondent’s domain name adequately from a complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 the complainant combined with a generic word or term); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as the objective bystander would assume that the domain name related to the incorporated status of Complainant.
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 (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 (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 SCHLUMBERGER mark and to use it in its domain name and has added the generic term “plc”, generally understood to designate incorporation in the United Kingdom which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to Complainant;
(b) Respondent registered the disputed domain name on March 17, 2016;
(c) Respondent has caused the domain name to redirect Internet users to Complainant’s website, www.slb.com. Respondent also uses an e-mail address associated with the domain name to impersonate Complainant’s employees and retrieve personal and financial information from an employment placement company;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts;
(e) Complainant contends that Respondent has no rights or legitimate interests in the domain name. According to Complainant, Respondent does not identify itself or its business as “Schlumberger,” and Complainant has not licensed or consented to Respondent’s use of the SCHLUMBERGER mark. The Panel notes that the WHOIS information merely lists “Nuno ramalho” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel notes Attached Exhibit 1 for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
(f) Complainant submits that Respondent is not using the domain name in connection with a bona fide offering of goods or services. Rather, Complainant submits that the domain name redirects Internet users to Complainant’s website, www.slb.com. The Panel notes that Complainant has not provided evidence to support its contention that Respondent’s domain name resolves to Complainant’s website. However, Complaint has certified that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate. Panels have held that a respondent’s use of a domain name to redirect to a complainant’s website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). As the Panel accepts Complainant’s submission, it finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(g) Complainant also argues that Respondent uses an e-mail address associated with the domain name to impersonate Complainant’s employees and retrieve personal and financial information from an employment placement company. See Compl., at Attached Ex. 7. The evidence supports that contention. Panels have decided that a respondent lacks rights and legitimate interests in a domain name where it uses an e-mail address associated with a domain name to phish for Internet users’ personal and/or financial information. See Church Mutual Insurance Company v. Paul Looney, FA 1668317 (Forum May 17, 2016) (“Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the <churchrnutual.com> domain name. Respondent registered and uses the disputed domain name and an associated email account to impersonate Complainant and acquire personal or financial information from Complainant or Complainant’s customers.”). As such, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.
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 contends that Respondent uses an e-mail address associated with the domain name to phish for Internet users’ personal and financial information. Id. Specifically, Complainant alleges that Respondent sent an e-mail to Complainant’s employees stating: “Thank you for your collaboration this week getting Bernardo De Almeida onboard. In regards to invoicing us, please ensure that invoices are sent via email to contractorinvoices@schlumbergerplc.com and please copy me in on invoices also as I will need to approve before payments can proceed.” Id. Panels have held that a respondent’s use of an e-mail address associated with a domain name to phish for Internet users’ personal and/or financial information is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See The Hackett Group, Inc. v. Brian Herns / The Hackett Group, FA 1597465 (Forum Feb. 6, 2015) (“Respondent is using the e-mail string associated with the disputed domain name to send fraudulent e-mails. The Panel finds that Respondent’s conduct contains the requisite competitive nature under Policy ¶ 4(b)(iii), and finds this is evidence of bad faith disruption.”). Thus, the Panel finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent’s domain name resolves to Complainant’s own website and Complainant has certified that the information contained in the Complaint is to the best of Complainant’s knowledge complete and accurate. Panels have determined that such use of a domain name by a respondent constitutes bad faith registration and use per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). As the Panel agrees with Complainant’s submission it finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <schlumbergerplc.com> domain name using the SCHLUMBERGER mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <schlumbergerplc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 2, 2016
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