The Complainant is Otkrytoe aktsionernoe obchtchestvo “GAZPROM” (OAO “GAZPROM”) of Moscow, Russian Federation, represented by SCP SALANS & ASSOCIES, France.
The Respondent is Amereks of Manisa, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2012, 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 December 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2013.
The Center appointed Luca Barbero as the sole panelist in this matter on January 11, 2013. 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 parent company of the Gazprom Group, a Russian global energy group, which is a leader among the world’s oil and gas companies.
The Complainant and its affiliates operate worldwide and their activities include every stages of the gas chain, from exploration to sales of gas to final clients, as well as generation and marketing of heat and electrical power.
In 2011, the Gazprom Group appeared amongst the first places for profits size in the global list of the American magazine “Forbes”. Moreover, the Complainant is the Russia’s largest joint stock company in terms of capitalization, with a market capitalization amounting to USD 128 billion at the end of 2011.
The Complainant holds the world’s largest natural gas reserves. The company’s share in the global and Russian gas reserves makes up 18 and 70 per cent respectively. In 2010, the Complainant’s share in the total Russian and global gas production accounted for 78 and 15 per cent respectively.
The Complainant also owns the world’s largest gas transmission network: it sells more than half of overall produced gas to Russian consumers and exports gas to more than 30 countries, being among the main natural gas suppliers to European consumers.
In 2009, gas exports to Europe amounted to 69 per cent of foreign sales. In particular, Turkey (the country where the Respondent is based) is one of the largest buyers of Complainant’s blue fuel (with Germany and Italy).
The Complainant is the owner of the International Trademark Registration No. 807,841 for GAZPROM (word mark), registered on April 22, 2003, designating “chemicals used in industry (class 1), industrial oils and greases, lubricants, fuels and illuminants, apparatus for lighting, heating, steam generating, water supply and sanitary purposes (class 11), transport (class 39)”; the International Trademark Registration No. 636,372 for GAZPROM (device mark), registered on May 18, 1995, designating “industrial oils and greases, lubricants, fuels, lightning preparations, oil, fuel gases (class 4), geological prospection, oil and gas fields prospection and control (class 42)”; the Community trademark No. 003,290,335 for GAZPROM (word mark), registered on January 28, 2005, designating “chemicals used in industry (class 1), industrial oils and greases, lubricants, fuels, illuminants, oil gases, fuel gas, liquid gas, compresses gas (class 4), transport (class 39)”; and the Community trademark No. 004,726,841 GAZPROM (device mark), registered on December 18, 2006, designating “chemicals used in industry (class 1), industrial oils and greases, lubricants, fuels, lightning preparations, oil gas, fuel gas, liquid gas, compresses gas (class 4), transport (class 39)”.
The Complainant and its subsidiaries also own numerous domain names constituted by the mark GAZPROM, alone, such as , , , , or in combination with the word “energy”, such as and .
The disputed domain name was registered on May 3, 2011 and is redirected, at the time of the drafting of the decision, to the web site ‘’’’, promoting financial services provided by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant states that the Gazprom Group benefits from an indisputable reputation throughout the world, including in Turkey, where the Respondent’s headquarter is located. The Complainant also states that the GAZPROM logo and names are regularly used as trademarks throughout the world for the goods and services covered by the trademark registrations mentioned in the paragraphs above. The Complainant also states that the GAZPROM trademarks enjoy a strong reputation worldwide, including in Turkey, where the Respondent is based.
The Complainant contends that the disputed domain name is made up of a combination of the words “gazprom” and “energy” where “gazprom” is a fantasy word and “energy” has semantic meaning.
The Complainant highlights that the fact that the word “energy” is added to the Complainant’s trademark does not erase the similarity between the Complainant’s trademark and the disputed domain name, since “energy” is a generic word and “Gazprom energy” has also been registered as a domain name by the Complainant.
With reference to the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Complainant denies any direct connection with the Respondent and states that there is no license, consent or other right by which the Respondent would have been entitled to register or use the disputed domain name incorporating the Complainant’s trademark GAZPROM.
The Complainant states that the disputed domain name was redirected, before the receipt of the first cease and desist letter from the Complainant, to a website presenting the Respondent’s activities in the field of the energy industry (i.e. a field of activity identical with that of the Complainant) and where no relationship with the trademark owner was disclaimed.
The Complainant informs the Panel that, further to the Complainant’s first cease and desist letter of July 18, 2011, the Respondent stopped using actively the disputed domain name and offered it for sale on the website “”. After that, the Respondent redirected the disputed domain name to its website ‘’’’. The Complainant highlights that such use of the disputed domain name cannot constitute a bona fide offering of goods or services and points out that using the disputed domain name in order to divert consumers for commercial gain cannot constitute a fair use.
The Complainant states that the Respondent was aware of the Complainant’s trademark GAZPROM when it registered the disputed domain name since the GAZPROM trademark has been used for many years in more than 30 countries, including Turkey, and is well known throughout the world in the field of the energy industry.
The Complainant contends that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and states that the Respondent’s conduct is aimed at disrupting the Complainant’s business.
The Complainant also states that the disputed domain name constitutes an opportunistic registration, which has been made and used by the Respondent in bad faith, as highlighted also be the following elements:
- the disputed domain name was redirected in the past to a website promoting the Respondent’s services in the field of energy (i.e. services identical with or similar to the goods and services designated under the Complainant’s GAZPROM trademarks) and the Respondent’s website did nothing to disclaim any relationship with the trademark owner, thus leading users to believe that the Complainant was operating or was
associated to the operation of the website;
- the Respondent did not answer to the Complainant’s letter with which the Respondent was requested to stop using the trademark GAZPROM in any manner whatsoever, and to take the necessary measures to organize, at its own cost, transfer of the disputed domain name back to the Complainant;
- after receiving the Complainant’s letter, the Respondent stopped using the disputed domain name and offered it for sale on the website ‘’’’ at the amount of USD 10,000;
- also a second cease and desist letter sent by the Complainant’s counsel on September 25, 2012 remained unanswered and, instead of transferring the disputed domain name to the Complainant, the Respondent has started using again the disputed domain name by redirecting it to its website “”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trade or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of numerous trademark registrations worldwide that consist of, or contain, the trademark GAZPROM, including the International Trademark Registration No. 807,841 for GAZPROM (word mark), registered on April 22, 2003, in classes 1, 11 and 39 and the Community trademark No. 003 290 335 for GAZPROM (word mark), filed on July 30, 2003, in classes 1, 4 and 39. The Panel also finds that the Complainant enjoys a widespread reputation in the world and that the Complainant’s trademark is well known in the field of gas production and distribution.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature. See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
More in particular, the word “energy” is descriptive of the Complainant’s business and is therefore apt to increase the likelihood of confusion with the Complainant and its products and services. See, amongst others, Fortum Corporation v. Aviada Group Oy, Antti Liljander,WIPO Case No. D2012-1790 (, and ) and Duracell Batteries BVBA v. Stanley Myers Ltd,WIPO Case No. D2011-1325 ().
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003 0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004 0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. FA852581; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant’s prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. There is also no evidence that the Respondent is commonly known by the disputed domain name.
Furthermore, from the evidence submitted by the Complainant as to the use of the disputed domain name made by the Respondent, there is no indication before the Panel that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the disputed domain name.
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
As to bad faith at the time of the registration, the Panel finds that, in light of the well-known character of the trademark GAZPROM, which has been extensively used since many years in connection with the Complainant’s products and services in the field of energy also in Turkey, where the Respondent is based, the Respondent was or ought to be aware of the Complainant’s trademark at the time of the registration.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O’Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003 0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868, “it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive worldwide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel finds that also the Respondent’s use of the disputed domain name amounts to bad faith. In fact, the Complainant has submitted evidence showing that the Respondent has pointed the disputed domain name to a website promoting services in the same business sector of the Complainant. Moreover, as highlighted by the screenshots attached to the Complaint, after receipt of the Complainant’s first cease and desist letter, the Respondent offered the disputed domain name for sale on Sedo at the amount of USD 10,000 and, following the Complainant’s second cease and desist letter, redirected the disputed domain name to its website “”.
The Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent’s conduct clearly shows that it has attempted to attract Internet users to its own websites for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services.
Another indication of bad faith use in the present case is that the Respondent has not responded to the Complainant after receipt of the Complainant’s cease and desist letters but continued its behaviour even after the Complainant had filed its Complaint with the Center (see e.g. Luigi Lavazza S.p.A. v. Flying Stingrays Ltd, WIPO Case No. D2012-1391).
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection,WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. See also Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008 0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy. 7. Decision
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.
Luca Barbero
Sole Panelist
Date: January 25, 2013
Full & Egal Universal Law Academy