The Complainant is Anadarko Petroleum Corporation, , Houston, Texas, United States of America, represented by Adams and Reese LLP., United States of America.
The Respondent is ICS INC., Grand Cayman, Cayman Islands, Territory of the United Kingdom of Great Britain and Northern Ireland; Contact Privacy, Inc., Toronto, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2012. On August 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 28, 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 September 11, 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 September 11, 2012.
The Center verified that the Complaint together with the amendment to the Complaint/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 September 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2012.
The Center appointed Nicholas Weston as the sole panelist in this matter on October 18, 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.
The language of this administrative proceeding is English, being the language of the registration agreement. 4. Factual Background
The Complainant operates an oil and natural gas exploration and production business in more than 10 countries. The Complainant holds registrations for the ANADARKO trademark and variations of it in several countries including the United States of America (“United States”), which it uses to designate goods and services including 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 United States trademark registration has been in effect since 1985. According to FORTUNE magazine, approximate global revenue for sales of ANADARKO branded product in 2004 was US D 5.1 billion.
The Complainant has continuously owned and operated a website resolving from the domain name since 1994. Its company email system also uses that domain name.
The Disputed Domain Name was registered on December 14, 2011, and resolves to click-through or pay-per-click (“PPC”) landing pages. PPC advertisements display a link when a keyword query with a search engine matches an advertiser’s keyword list. PPC advertising is a search engine marketing technique for directing traffic to a landing page containing sponsored links or sponsored advertisements. In this case, when the Disputed Domain Name was typed in, it redirected traffic to a PPC landing page with advertisements and links for pornographic websites, electronics, clothing and other goods and services. 5. Identification of Respondent
Having regard to the remedy sought in the Complaint, and having regard to paragraph 10(b) of the Rules, the Panel must be satisfied that any orders made will address the appropriate Respondent.
Paragraph 1 of the Rules defines “Respondent” as “the holder of a domain name registration against which a complaint is initiated”. The Complainant has named and proceeded against a domain name registration privacy service listed as the registrant of the Disputed Domain Name in the publicly available Internic WhoIs prior to the filing of the Complaint.
The use of a privacy service raises three issues for determination by the Panel. First, the Panel must identify the appropriate Respondent. Second, the Panel must determine the applicable mutual jurisdiction. Third, the Panel must determine whether the Center has adequately discharged its responsibility to contact the Respondent by reasonable means.
Taking into account the above questions as also set out in Accor and SoLuxury HMC v. Domains by Proxy, Inc. and Therese Kerr,WIPO Case No. D2009-0243, and in view that most UDRP panels in cases involving privacy or proxy services in which disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the publicly available Internic WhoIs at the time the complaint was filed, and of any disclosed underlying registrant, this Panel finds that in light of the record the named Respondent ICS INC. and Contact Privacy, Inc. is the proper respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.9).
As noted having regard to the Complainant’s submissions and the location of the principal office of the Registrar, it appears that the applicable mutual jurisdiction1 is Ontario in Canada.
Finally, the Panel finds that the Respondent has received appropriate notice of this proceeding and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. Prima facie evidence of this is the courier’s delivery report to the Center following attempted physical notification of the Complaint to the Respondent. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of actual service. 6. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark ANADARKO in various countries as prima facie evidence of ownership.
The Complainant submits that the mark ANADARKO is well-known and that its rights in that mark predate the registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ANADARKO trademark and that the similarity is not removed by the addition of the word “webmail” (citing Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services, that “sending website traffic to third parties does not constitute a bona fide offering of goods or services” (citing Société Produits Nestlé S.A. v. A Domain Privacy, Shu Lin, Shu Lin Enterprises Limited,WIPO Case No. D2010-1882).
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules, as by using the Complainant’s ANADARKO mark in the Disputed Domain Name, “is intended to attract Complainant’s employees for financial gain by creating a likelihood of confusion with trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the good s and services advertised thereon “to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website” (presumably referring to Philip Morris Inc. v. Alex Tsypkin,WIPO Case No. D2002-0946). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 7. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ANADARKO dating from 1985. The Panel finds that the Complainant has rights in the mark ANADARKO in the United States, pursuant to United States Trademark Registration No. 1,435,026. In any event, the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark ANADARKO.
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ANADARKO trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark; (b) conjoined with the prefix “webmail”; (c) followed by the top level domain suffix “.com”.
It is well established that the top-level designation used as part of a domain name may be disregarded: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). Here, the relevant comparison to be made is with the second level portion of the Disputed Domain Name: “webmailanadarko”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, a descriptive word: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel agrees with other panels which held that the addition of the word “webmail” is not sufficient to avoid confusion and finds that the additional element, specifically the word “webmail”, before the Complainant’s registered trademark, does not serve to adequately distinguish the Disputed Domain Name in this matter which remains confusingly similar to the registered trademark (see Aktiebolaget TeliaSonera v. Cenal com Ltd.,WIPO Case No. D2009-0356; Intesa Sanpaolo S.p.A. v. Hu Lim,WIPO Case No. D2009-1793).
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Disputed Domain Name is therefore confusingly similar to the ANADARKO trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1)
It is well established that a respondent has a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase and not because of its value as a trademark and that web site is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See, National Trust for Historic Preservation v. Barry Preston, supra; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2)
However, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a pay-per-click (”PPC”) landing web page dominated by an article describing the Complainant’s history and advertising or offering for sale products in connection and competition with the Complainant’s mark, thereby illegitimately seeking “to trade on the fame of the Complainant’s mark”. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer's mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using Complainant’s mark in order to attract Internet users to its website and has been using the Disputed Domain Name to divert Internet traffic to its PPC web page.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, (relevantly):
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 web site 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 web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not exhaustive of all circumstances from which such bad faith may be found (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Name in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, particularly where as here the Complainant’s trademarks are plainly based on a uniquely coined word “anandarko” and this Panel so finds (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
Further, a gap of ten years between registration of the Complainant’s trademark and the Respondent’s registration of the Disputed Domain Name (containing the trademark) can in certain circumstances be an indicator of bad faith. (See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Complainant held direct United States registration for the trademark ANADARKO, United States Registration No. 1,435,026 from 1987 predating its rights from the Respondent’s registration by approximately 24 years.
A further conclusion can be drawn about the Respondent from its use of the Disputed Domain Name resolving to a web page containing links and advertisements that directly compete with the offerings to be found on the web site operated by the Complainant. In this Panel’s view, it is in breach of the Tucows Inc. “Registration Agreement” for breach of the acknowledgment: “neither the registration of the domain name nor the manner in which you intend to use it, infringes upon the legal rights of a third party.” This reinforces the perception of an apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark.
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is in part for the Respondent to passively collect click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s ANADARKO products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,supra; Lilly ICOS LLC v The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
The Respondent’s business model also appears to involve a phishing scheme, a practice intended to defraud consumers, or even employees of the Complainant, into revealing personal and proprietary information, in this case by adding the word "webmail" to the Complainant’s trademark within the Disputed Domain Name. This Panel agrees with other panels that have found phishing to be evidence of both bad faith registration and bad faith use (see CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251; Grupo Financiero Inbursa, S.A. de C.V. v. Inbuirsa,WIPO Case No. D2006-0614; Confédération Nationale du Crédit Mutuel v. Daniel Delcore,WIPO Case No. DLC2009-0001).
This Panel finds that the Respondent has taken the Complainant’s trademark ANADARKO and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for two purposes, namely "phishing” and second, to capitalize on the reputation of the trademark by diverting Internet users to a PPC parking web page hosted by the Registrar for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. Decision
For 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.
Nicholas Weston
Sole Panelist
Dated: October 31, 2012
1 In general, having regard to the definition of “mutual jurisdiction” in the Rules, it would either be that of the registrant’s address as identified in the Registrar’s WhoIs at the time of the filing of the complaint with the provider or the principal office of the Registrar, see Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320. In this case, the Complainant has elected the jurisdiction of the courts at the location of the principal office (i.e. Canada).
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