WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Saipem S.p.A. v. Remedy Financial, Matthew Frings Case No. D2010-0630 1. The Parties
The Complainant is Saipem S.p.A. of Milan, Italy, represented by Studio Legale Tonucci & Partners, Italy.
The Respondent is Remedy Financial, Matthew Frings of Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2010. On April 21, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Ross Wilson as the sole panelist in this matter on May 31, 2010. 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.
On June 2, 2010 the Respondent emailed the Center advising that it “will not dispute the claim by Saipem and will transfer the name accordingly”.
The Panel has several options to consider on how to deal with the Respondent's delayed intervention. It could seek the Complainant's agreement to suspend the proceedings to pursue the transfer outside the dispute arrangements or it could proceed to grant the transfer as requested by the Respondent in the context of the dispute proceedings. The latter option could be dealt with by proceeding without a review of the facts the case, proceeding on the basis that the Respondent's consent to transfer is a concession that the three elements of the Policy have been met or proceeding to consider the evidence submitted in relation to each of the elements.
The Panel considers that the most appropriate way forward is to proceed with the conduct of the case recognising that the Complainant has paid its fee, there is no guarantee that the first option will resolve the matter outside the proceedings and the proposed transfer may not occur in a timely manner. The Panel intends to decide this case on the basis of the evidence before it with respect to the three elements of the Policy in a similar way adopted by panelists in Société Française du Radiotéléphone-SFR v. Karen,WIPO Case No. D2004-0386 and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. 4. Factual Background
The Complainant is a major international oil and gas contracting company which began operations in the 1950s. It employs over 35,000 staff and has offices in Europe, North and South America, Asia, Australia, Africa and the Middle East. In 2009 its cash flow was Euro 1,172 million and since the commencement of 2010 it has been awarded contracts for USD 1,870 million for new oil and gas activities in Mexico, Congo, Algeria, Peru, the Persian Gulf, Kazakhstan, Norway and United Kingdom.
The company first registered the trademark SAIPEM in 1964 in Italy and has subsequently registered trademarks in the United States, Canada, Australia and several countries in the European Union, Asia and Africa.
The Respondent registered the disputed domain name on November 19, 2009. 5. Parties' Contentions A. Complainant
The Complainant contends that it is the exclusive holder of a number of registered trademarks consisting of or incorporating the trademark SAIPEM. It considers there is a substantial likelihood that Internet users will be confused into believing there is some affiliation, connection, sponsorship, approval or association between the Complainant and the Respondent when in fact there is none.
The Complainant asserts that the Respondent has no right to use the Complainant's trademark as it has never licensed, authorized or otherwise permitted the Respondent to register a domain name incorporating the trademark or to make any use of the trademark in order to distinguish its own business. The Complainant is unaware of any legitimate right the Respondent could have in the disputed domain name and submits that the Respondent has no legitimate interest in the disputed domain name or has made no good faith or fair use at all.
The Complainant considers that its trademark is so well known that the only conclusion can be that the Respondent knew, or at least should have known, of the Complainant's prior rights before registering the disputed domain name. To the Complainant, the actual passive holding of the disputed domain name by the Respondent clearly shows the lack of any legitimate interest and the opportunistic conduct of the Respondent whose sole and real goal was to obtain an unfair advantage from the registration of the disputed domain name.
The Complainant claims that the Respondent's bad faith registration is clearly seen in the Respondent's full awareness of breaching the Complainant's exclusive rights to the trademark by registering the disputed domain name and another on the same day. The latter domain name incorporates the Complainant's controlled company Saipem America Inc. which is registered in Texas, the same state of residence as the Respondent.
The Complainant asserts that the Respondent's registration and use of the disputed domain name cannot constitute a bona fide offering of goods and services because there is no relationship between the Complainant and the Respondent, the disputed domain name is not the only name which the Respondent could have used to describe its business, the Respondent attracts Internet users by creating the likelihood of confusion with the Complainant's trademarks as to the source of the website and the Respondent prevents the Complainant from reflecting its mark in the corresponding domain as that of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions but as referenced above subsequently emailed to the Center an offer to transfer the disputed domain name. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the trademark SAIPEM. The disputed domain name consists of the Complainant's trademark in its entirety together with the gTLD “.info”.
It has been held in many previous cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc.,WIPO Case No. D2000-0113 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306).
The Panel acknowledges that the gTLD “.info” suffix only indicates that the disputed domain name is registered under that gTLD and cannot be considered distinctive.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is identical or confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name infers a website related to the services of the Complainant. Instead, the website is simply a portal for promoting the services of a third party, Namecheap, containing numerous links to Namecheap's website. Clearly, no rights or legitimate interests derive from this type of use of another's trademark and the Respondent is trying to benefit from the reputation of the Complainant's widely known trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see Drexel University v. David Brouda,WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Moreover, the Complainant has denied having any connection with the Respondent or providing any license or authorisation at all. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 the panel stated “that in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith is evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. Evidence shows that the Respondent is attempting to confuse Internet users by attracting them to a website to gain a commercial advantage.
The Complainant has provided evidence that the Respondent must have known of the Complainant's trademark at the time of registration because the Respondent registered a second domain name on the same day as the disputed domain name was registered. The second domain name contains in its entirety the name of the Complainant's American company which happens to be established in the same state where the Respondent resides. As expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, the selection of domain names are so obviously connected to the complainant's trademark that their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 where the respondent registered a number of domain names incorporating a well known trademark in its entirety, the panel stated “that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the word “saipem” was not merely coincidental but was a deliberate action to gain some sort of commercial advantage.
On the basis of the above and when considered together with the fact that the Respondent has no rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Ross Wilson
Sole Panelist
Dated: June 14, 2010
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