Schlumberger Limited, N.V. v. joyful day
Claim Number: FA1605001675335
Complainant is Schlumberger Limited, N.V. (“Complainant”), represented by Mitchell M. Blakely, Texas, USA. Respondent is joyful day (“Respondent”), New York, USA.
REGISTRAR AND DOMAIN NAME
The domain name at issue is <schlumbergercompany.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2016; the Forum received payment on May 17, 2016.
On May 17, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <schlumbergercompany.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 May 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 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@schlumbergercompany.com. Also on May 19, 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 June 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Since 1934, Complainant has continuously and exclusively used the SCHLUMBERGER mark in connection with oilfield services. The SCHLUMBERGER mark is registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 842,600, registered Jan. 16, 1968).
2. Respondent’s <schlumbergercompany.com> domain name is confusingly similar to Complainant’s SCHLUMBERGER mark. The domain name is confusingly similar to the SCHLUMBERGER mark as it incorporates the entire mark with the addition of the generic word “company” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor licensed or in any manner permitted to use Complainant’s SCHLUMBERGER mark. Respondent has not used, nor made any demonstrable preparations to use, the domain.
4. Respondent has used e-mails generated by the domain to pose as an employee of Complainant and contact Complainant’s suppliers. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
5. Respondent has registered and is using the domain name in bad faith. Respondent’s use of fraudulent e-mail accounts to contact Complainant’s suppliers shows that Respondent intended to compete with and disrupt Complainant’s business. Respondent’s use of the domain name shows that Respondent had actual or constructive knowledge of Complainant’s rights in the SCHLUMBERGER mark.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SCHLUMBERGER mark. Respondent’s domain name is confusingly similar to Complainant’s SCHLUMBERGER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <schlumbergercompany.com> domain name, and that Respondent registered and uses the domain name 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 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.”).
Since 1934, Complainant has continuously and exclusively used the SCHLUMBERGER mark in connection with oilfield services. Complainant has provided the Panel with evidence that the SCHLUMBERGER mark has been registered by Complainant with the USPTO (e.g., Reg. No. 842,600, registered Jan. 16, 1968). Registration of a mark with the USPTO serves to establish a Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).). Therefore, Complainant has demonstrated rights in the SCHLUMBERGER mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <schlumbergercompany.com> domain name is confusingly similar to the SCHLUMBERGER mark. Complainant asserts that the domain name is confusingly similar to the SCHLUMBERGER mark as it incorporates the entire mark with the addition of the generic word “company” and the gTLD “.com.” The additions of generic terms and a gTLD do not differentiate a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a <schlumbergercompany.com> domain name from a mark under Policy ¶ 4(a)(i).). Accordingly, the Panel determines that the <schlumbergercompany.com> domain name is confusingly similar to the SCHLUMBERGER mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <schlumbergercompany.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent has no rights or legitimate interests in the <schlumbergercompany.com> domain name. To support this claim, Complainant contends that Respondent has not been commonly known by the domain name, nor has Complainant been permitted to use the SCHLUMBERGER marks or entered into a licensing arrangement with Complainant. WHOIS information for the <schlumbergercompany.com> domain identifies Respondent as “joyful day,” which does not resemble the <schlumbergercompany.com> domain name. A respondent is not commonly known by a domain name where information in the record, including WHOIS information, is to the contrary. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by a domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel concludes that Respondent is not commonly known by the <schlumbergercompany.com> domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant claims that Respondent is not using the <schlumbergercompany.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant states that the website is currently inactive; Respondent has offered no evidence to the contrary. Complainant states that the only use of the <schlumbergercompany.com> domain is to send e-mail from an account associated with the domain name. In the provided attachment, someone using the email address <ashok_belani@schlumbergercompany.com> is attempting to impersonate Complainant and place an order with one of Complainant’s suppliers. Respondent’s actions appear to be an attempt to pass itself off as Complainant, which panels have found is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the <schlumbergercompany.com> domain name). Accordingly, the Panel finds that Respondent’s attempt to masquerade as Complainant is not within uses allowable under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of fraudulent e-mail accounts to contact Complainant’s suppliers shows that Respondent intended to disrupt and compete with Complainant’s business. The record indicates that Respondent is using the <schlumbergercompany.com> domain name to send fraudulent e-mails to Complainant’s suppliers while posing as Complainant. This competes with and disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”).
Finally, Complainant contends that in light of the fame and notoriety of Complainant's SCHLUMBERGER mark, it is inconceivable that Respondent could have registered the <schlumbergercompany.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent undoubtedly had actual knowledge of Complainant's rights in the mark prior to registering the <schlumbergercompany.com> domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <schlumbergercompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 5, 2016
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