Oceaneering International, Inc. v. Ben Mbonu / DX WebsiteStudio
Claim Number: FA1606001677636
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Okin Goldsmith of McCarter & English, LLP, New Jersey, USA. Respondent is Ben Mbonu / DX WebsiteStudio (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oceaneering-ng.com> and <oceaneering-ng.org>, 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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2016; the Forum received payment on June 2, 2016.
On June 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oceaneering-ng.com> and <oceaneering-ng.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@oceaneering-ng.com, postmaster@oceaneering-ng.org. Also on June 6, 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 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 has rights in the OCEANEERING mark through its 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 <oceaneering-ng.com> and <oceaneering-ng.org> domains are confusingly similar to Complainant’s OCEANEERING mark because they wholly incorporate the OCEANEERING mark and add the letters “ng.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and he is not connected or affiliated with Complainant. Further, Respondent is using the <oceaneering-ng.org> domain name to attempt to pass himself off as Complainant. The <oceaneering-ng.com> domain name resolves to a parked page hosting pay-per-click links relating to Complainant’s industry. Neither use constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Complainant’s longstanding trademark registrations and Respondent’s use of the disputed domain names demonstrate that Respondent had actual knowledge of Complainant’s OCEANEERING mark and rights at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Oceaneering International, Inc., is a publicly traded global
provider of engineered products and engineering services. Complainant has rights in the OCEANEERING mark through its multiple registrations of the mark with the USPTO (e.g., Reg. No. 983,504, registered May 7, 1974). Respondent’s <oceaneering-ng.com> and <oceaneering-ng.org> domains are confusingly similar to Complainant’s OCEANEERING mark.
Respondent, Ben Mbonu / DX WebsiteStudio, registered the <oceaneering-ng.org> domain on January 7, 2016 and the <oceaneering-ng.com> domain on February 14, 2016.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, and he is not connected or affiliated with Complainant. Further, Respondent is using the <oceaneering-ng.org> domain name to attempt to pass himself off as Complainant. The <oceaneering-ng.com> domain name resolves to a parked page hosting pay-per-click links relating to Complainant’s industry. Neither use constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s use of the <oceaneering-ng.org> domain name to attempt to pass himself off as Complainant is bad faith. Respondent’s use of Complainant’s <oceaneering-ng.com> domain name to resolve to a parked page hosting pay-per-click links is bad faith. Respondent had actual knowledge of Complainant’s OCEANEERING mark and rights at the time of registration.
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.”).
Complainant has rights in the OCEANEERING mark under Policy ¶ 4(a)(i) through its multiple registrations of the mark with the USPTO. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
Respondent’s <oceaneering-ng.com> and <oceaneering-ng.org> domain names are confusingly similar to Complainant’s OCEANEERING mark under Policy ¶ 4(a)(i) because the domains wholly incorporate the OCEANEERING mark and add the letters “ng.” Also, the domains include the addition of a hyphen and the affixation of either the generic top-level domain (“gTLD”) “.com” or “.org.”
Respondent’s use of the <oceaneering-ng.org> 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 pass off Respondent’s training services as those offered by Complainant. Panels have held that a respondent’s use of a domain 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
The <oceaneering-ng.com> domain name resolves to a page hosting links to third parties in the same industry as Complainant. Panels have held that a respondent’s use of a domain to host competing hyperlinks does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Respondent’s use of the <oceaneering-ng.org> domain name to attempt to pass himself off as Complainant is bad faith. Respondent’s use of Complainant’s <oceaneering-ng.com> domain name to resolve to a parked page hosting pay-per-click links is bad faith. Respondent had actual knowledge of Complainant's mark and rights at the time the domains were registered, and therefore Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Respondent’s continued misuse of the domains after it received a phone call and correspondence from Complainant informing Respondent of its OCEANEERING mark and rights shows bad faith on the part of Respondent.
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 <oceaneering-ng.com> and <oceaneering-ng.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 13, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page