WIPO Domain Name Decision D2018-0973 for clh.info
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Compañía Logística de Hidrocarburos CLH, S.A. v. DropCatcher.Info / Badminton, Inc. Case No. D2018-0973 1. The Parties
The Complainant is Compañía Logística de Hidrocarburos CLH, S.A. of Madrid, Spain, represented by PONS IP, Spain.
The Respondent is DropCatcher.Info of Washington, D.C., United States of America / Badminton, Inc. of Washington, D.C., United States of America, represented by Steven Rinehart and Stevan Lieberman, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Alfena, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 16, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 21, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2018. The Response was filed with the Center on June 3, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on June 11, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a large oil transportation and storage company, operating primarily in the Spanish market, with its headquarters in Madrid, Spain. Its operating income for its 2016 financial year was approximately EUR 711 million. The Complainant also trades outside Spain, through subsidiaries in the United Kingdom of Great Britain and Northern Ireland, Ireland and Oman.
The Complainant owns a number of trade mark registrations for CLH, both in Spain and in other territories. Its first CLH-related trade mark was registered in 1993. The Complainant’s CLH marks are almost entirely in stylized form and many are used in combination with a variety of different logos. They include, by way of example only, European Union Trade Mark registration number 013841101 for CLH (as a figurative mark) registered on September 29, 2015 in classes 16, 37, 40, 41, and 42.
The Complainant also owns a number of CLH-related domain names, including , , and .
The Respondent is a company based in Washington D.C., United States of America. The disputed domain name was registered by it on September 24, 2006. As at the time the Complaint was submitted, it redirected to a website offering it for sale for USD 2,888. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to its CLH trade marks. The services the Complainant provides in Spain and other countries are very extensive, its reputation has been acknowledged by a number of industry awards and its CLH-related trade marks have acquired a global and international character. As a result of the fame of its marks, the Complainant is entitled to protection against the use by third parties of CLH, even if the third party use is for goods and services dissimilar to those for which the Complainant’s trade marks have been registered.
The Complainant asserts that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The identity of the initial registrant of the disputed domain name in 2006 was initially protected by a privacy service. The Complainant has been unable to find any CLH trade marks registered on behalf of the Respondent and the Complainant has neither authorized nor granted a licence to the Respondent to register and use the disputed domain name or its CLH marks. Only the Complainant has the right to use its marks.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Complainant is a Spanish company, known worldwide, with extensive protection in its CLH trade marks. The Respondent was, or should have been, aware of the Complainant’s marks prior to registering the disputed domain name. If the Respondent had made the appropriate searches, it would have realised that, by registering the disputed domain name, it would be infringing the Complainant’s trade marks.
The Respondent used a privacy service when it registered the disputed domain name in September 2006 in order to prevent third parties from knowing it was the underlying registrant.
The Complainant’s searches have established that the disputed domain name was registered and the registration maintained in order that the Respondent could procure an offer from an eventual buyer of it. The Complainant has established that the disputed domain name has been for sale for USD 2,888, which is higher than the costs directly related to the registration and maintenance of the disputed domain name. See also the decisions of previous UDRP panels including The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd,WIPO Case No. D2000-0124 and the comments (in translation from the original Spanish) of the panel in J. García Carrión, S.A. v. Mª José Catalán Frías,WIPO Case No. D2000-0239, that “the one who registers a domain name in bad faith will use it in bad faith, as the bad faith is bound to the knowledge a person had at the time of registration of damaging, without legitimate cause, the rights of a third party”. B. Respondent
The Respondent submits that whilst the Complainant has alleged that it has a large number of trade marks which are identical to the disputed domain name, the majority are either stylised marks or word marks protecting expressions which are not identical to the disputed domain name. The only word mark identical to the disputed domain name is registered in Andorra.
The Respondent has reviewed trade marks incorporating the expression “clh” at the United States Patent and Trade Mark Office. The Complainant has never filed for trade mark protection for CLH in the United States of America, but four other parties have done so. Moreover, further searches establish that 19 other parties besides the Complainant have attempted to register CLH exclusive of other terms and there are 15 separate organisations which claim that CLH is an abbreviation/acronym for them. This establishes that the term “clh” is generic and that is why the Respondent acquired it.
The Respondent’s use of the disputed domain name constitutes use in connection with a bona fide offering of goods and services; see, for example, GLB Serviços Interativos S.A. v. Ultimate Search Inc (aka Ult. Search Inc),WIPO Case No. D2002-0189. The fact that the disputed domain name is generic and usable for any variety of generic purposes further establishes the Respondent’s legitimate interest in it.
The Respondent says that it is a good faith registrant of the disputed domain name. It draws attention to publications which indicate that, since the year 2000, every three letter “.com” generic Top-Level Domain (“gTLD”) has been registered as a domain name and, since 2013, all four letter “.com” gTLDs have also been registered as domain names. Three letter gTLD domain names are extremely valuable as generic abbreviations, and this is what motivated the Respondent to register it. Many UDRP panels have found in favour of respondents who have registered three letter domain names for bona fide purposes; see ETH Zürich (Eidgenössische Technische Hochschule Zürich) v. Andre Luiz Silva Rocha, Construtora Norberto Odebrecht S/A,WIPO Case No. D2016-0444.
There are many decisions under the Policy in which domain name resellers and other Internet businesses have been found not to have acted in bad faith when acquiring and offering for sale three and four letter domain names and/or descriptive/generic domain names; see SK Lubricants Americas v. Andrea Sabatini, Webservice Limited,WIPO Case No. D2015-1566 in which the panel commented that “the statement that an offer to sell a domain name which corresponds to a trademark is itself evidence of bad faith is simply wrong. Carrying on business in registering descriptive or generic domain names is not of itself objectionable”. The same is true in this case.
The Respondent argues that the Complainant must show that the Respondent registered the disputed domain name to take advantage of the confusion between the disputed domain name and the Complainant’s rights. It has failed to do so. The Respondent did not register the disputed domain name for the purpose of selling, renting or transferring it to the Complainant nor has the Respondent registered the disputed domain name to prevent the Complainant from reflecting its mark in a corresponding domain name nor has it engaged in a pattern of such conduct.
The disputed domain name was registered in September 2006, nearly 12 years before the current proceedings were commenced.
The Complainant has made a general statement that the Respondent has acted in bad faith without showing that this is actually the position.
Laches