The Complainant is Anadarko Petroleum Corporation of The Woodlands, Texas, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is PrivacyP, Domain Admin of Queensland, Australia / Michael Piotrowski, Forthright Media of Warsaw, Poland. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2012. On July 31, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2012, 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 August 13, 2012 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 August 14, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed J. Nelson Landry as the sole panelist in this matter on September 28, 2012. 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 the owner of 24 registered trademarks consisting of ANADARKO alone, ANADARKO PETROLEUM CORPORATION or ANADARKO in association with a figurative logo or another descriptive term (herein collectively the “ANADARKO Trademarks”). The Complainant has commenced the use of the trademark ANADARKO in 1985, and the other ANADARKO Trademarks starting in 1998 in association with diverse fields of activities, comprising oil and gas exploration, drilling and production, insurance and financial services in the fields of industrial leasing and purchasing, computer, science and legal services, lubricants, crude oil and natural gas, building construction and repair services, advertising and business services and transportation and storage services.
The Complainant is also the owner of the domain name at which address it operates a website since 1994.
On September 15, 2004, the Complainant was listed as the 345th largest company in the United States according to Fortune magazine with annual revenues of USD 5.1 billions.
The disputed domain name has been created on September 15, 2004, was set to expire on September 15, 2012 but has been renewed and locked by the Registrar pending the outcome of this proceeding.
The Complainant has not authorized nor licensed the Respondent to register the disputed domain name and use any of its ANADARKO Trademarks or to act as its agent or representative. The website of the Respondent at the address of the disputed domain name incorporates hyperlinks which invite Internet visitors to consult a series of advertisings where each time a person clicks on an advertising link, a remuneration may be paid to the Respondent.
Furthermore, some of the advertisements and sponsored links on the Respondent’s website direct the Internet visitors to companies that offer goods and services which are competitive with those offered by the Complainant in association with several of its ANADARKO Trademarks. The Respondent’s website also includes a series of links to such terms as “Exxon and Mobil Gasoline”, “Crude Oil Investments” and “LWD Drilling”. A click on “LWD Drilling” brings the visitor to the Weatherford website where the visitor will see information about the well drilling services offered by Weatherford which company is a direct competitor of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant represents that it has rights in the registered Trademarks ANADARKO and ANADARKO PETROLEUM CORPORATION, the first one having been used since 1985 in diverse categories of goods and services including oil and gas exploration, drilling and production and in respect of which ANADARKO Trademarks it has, in different media format, spent millions of dollars to advertise, market and promote its ANADARKO brand. The Complainant further represents that the disputed domain name is confusingly similar to its ANADARKO Trademarks since the omission of the term “corporation” and the addition of the “.com” suffix is irrelevant to the consideration of the question of confusing similarity and in this respect relies on two UDRP panel decisions. See The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884 and Société Nationale des Chemins de Fer Français, SNCF v. Transure Enterprise Ltd / A Domain Privacy,WIPO Case No. D2011-0447.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name since it has never been commonly known by the disputed domain name, is not making a legitimate noncommercial or fair use of said disputed domain name without intent for commercial gain. The Complainant further states that it has not licensed nor authorized the Respondent to use any of its ANADARKO Trademarks and that the Respondent is not authorized to act on behalf of the Complainant.
The Complainant further contends that the Respondent operates a website at the address of the disputed domain name from which it makes a profit by the presence of many sponsored links (Annex 9 to the Complaint) which generates remuneration for the Respondent each time a visitor clicks on an advertising link.
The Complainant concludes that such use of sponsored links by the Respondent does not constitute a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) or a legitimate non commercial or fair use under the Policy, paragraph 4(c)(iii). See Société Produits Nestlé S.A. v. A Domain Privacy, Shu Lin, Shu Lin Enterprises Limited,WIPO Case No. D2010-1882.
The Complainant submits that by reason of the Complainant’s company renown on September 15, 2004, ranking then with companies such as Apple, Sack’s, A and Harley Davidson, the Respondent should have known of the existence of the Complainant and its well-known ANADARKO Trademarks and on that basis, submits that the disputed domain name was registered in bad faith.
The Complainant further submits that in registering the disputed domain name, the Respondent prevents the Complainant from registering a domain name that reflects the ANADARKO and/or ANADARKO PETROLEUM CORPORATION Trademarks and concludes that this constitutes use in bad faith of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent 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
In submitting its numerous trademark registrations in respect of ANADARKO and ANADARKO PETROLEUM CORPORATION and their use since 1985 and 1998, the Complainant clearly has demonstrated having rights in its ANADARKO Trademarks. It is well established, as acknowledged in the two UDRP decisions relied upon by the Complainant, that the deletion of generic term such as “corporation” and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” does not in any way diminish the confusing similarity of the disputed domain name with the ANADARKO Trademarks of the Complainant.
Therefore, the Panel finds that the disputed domain name is confusingly similar with the ANADARKO Trademarks of the Complainant.
The first criterion of the Policy has been met. B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of any of its ANADARKO Trademarks.
Considering the prima facie evidence that the Complainant has produced, in particular the highly distinctive character of its Trademarks by reason of the extensive use and the millions of dollars it has spent in advertising, marketing and promoting its Trademarks, on the one hand, and the presence of the numerous links to terms such as “Exxon and Mobil Gasoline”, “Crude Oil Investments”, “LWD Drilling”, on the other hand, the Complainant has demonstrated that the Respondent is using the disputed domain name for commercial gain contrary to the Policy, paragraph 4(a)(ii).
The Panel finds that the Respondent has no rights and legitimate interests in the disputed domain name.
The second criterion of the Policy has been met. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
The trademark ANADARKO had been registered and used by the Complainant for more than 20 years and the trademark ANADARKO PETROLEUM CORPORATION for six years, both with the benefit of substantial spendings in promotion in millions of dollars prior to September 2004 and have thus acquired substantial distinctiveness, at least in respect of the trademark ANADARKO. The term “anadarko” is a truly inventive or coined word, as opposed to a descriptive or generic term slightly modified. The Panel is of the view that it is almost inconceivable that the Respondent was not aware of the existence of the ANADARKO Trademarks of the Complainant particularly when the Panel considers the use in the disputed domain name of the term “petroleum” as opposed to “business, finance, insurance, computer” or other generic terms corresponding to the fields of use associated with the trademark ANADARKO. In the Panel’s view, there is more than a coincidence in this case, it appears to be a deliberate choice.
In view of the above, the Panel finds that the disputed domain name was registered in bad faith.
Considering that the Complainant has already registered the domain name and used it permanently since 1994 (Annex 7 to the Complaint), the disputed domain name prevents the Complainant to register , or as domain names which reflects its ANADARKO Trademarks and this behavior demonstrates, in this Panel’s view, that under the Policy, paragraph 4(b)(ii), the disputed domain name was registered in bad faith. The use of the disputed domain name in bad faith is further confirmed by the numerous hyperlinks present on the website of the Respondent at the disputed domain name and more so by the redirecting of the Internet visitors to websites of competitors of the Complainant when the said Internet visitors click on those hyperlinks.
The Panel finds that the disputed domain name is being used in bad faith.
The third criterion of the Policy has been met. 7. Decision
The Panel concludes that:
(a) the disputed domain name is confusingly similar to the Complainant’s ANADARKO Trademarks; and
(b) the Respondent has no rights or legitimate interests in the disputed domain name ; and
(c) the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
J. Nelson Landry
Sole Panelist
Dated: October 10, 2012
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