Complainant is Petroskills, LLC of Tulsa, Oklahoma, United States of America, represented by Gowling Lafleur Henderson, LLP, Canada.
Respondent is Chen Xiaojie of Shanghai, China / Shlomo Icik of Bratislava, Slovakia1. 2. The Domain Name and Registrar
The disputed domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiD (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2013. On October 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 16, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 24, 2013. On October 16, 2013, the Center transmitted an email to the parties in both Slovak and English language regarding the language of the proceeding. On October 18, 2013, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
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 Respondent of the Complaint, and the proceedings commenced on October 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 29, 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
Complainant is a worldwide active company in oil and gas training, consulting and educational services with legal domicile in Oklahoma, United States of America.
Complainant has provided evidence that it is the registered owner of various trademarks relating to the brand “PETROSKILLS”, namely:
- Word mark: PETROSKILLS, United States Patent and Trademark Office (USPTO), Registration No.: 2611488, Registration Date: August 27, 2002, Status: Active;
- Word mark: PETROSKILLS, United States Patent and Trademark Office (USPTO), Registration No.: 2735116, Registration Date: July 8, 2003, Status: Active;
- Word mark: PETROSKILLS, Office for Harmonization in the Internal Market (OHIM), Registration No.: 1580034, Registration Date: July 30, 2001, Status: Active.
The disputed domain name was registered on October 1, 2007; it redirects to a website at “www.” which is a typical pay-per-click (PPC) website which displays numerous hyperlinks many of which somehow relate to the oil and gas industry and affiliated training.
Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that the disputed domain name is confusingly similar to Complainant’s PETROSKILLS trademark, because the disputed domain name incorporates said trademark in its entirety, with a simple intentional misspelling by adding the letter “l” between the letters “o” and “s” which constitutes prima facie evidence of confusion.
Complainant further suggests that Respondent has no rights or legitimate interests in respect of the disputed domain name because (1) there is no evidence to suggest that Respondent has ever used, or has demonstrated preparations to use, the disputed domain name, or a name corresponding to the same, in connection with a bona fide offering of goods or services, (2) there has never been any relationship between Complainant and Respondent, the latter of which is not licensed, or otherwise authorized, directly or indirectly, to register or use, the PETROSKILLS trademark in any manner whatsoever, including in, or as part of, a domain name, (3) the disputed domain name is obviously being used to divert Internet traffic to a pay-per-click website which displays sponsored links to Complainant’s competitors, thus putting Respondent in a position to reap a financial benefit and (4) the disputed domain name constitutes an instance of typo-squatting which as such undermines a claim of rights or legitimate interests in the disputed domain name.
Finally, Complainant argues that the disputed domain name was registered and is being used in bad faith since (1) the disputed domain name resolves to a pay-per-click website featuring link titles that overlap with Complainant’s field of activity as well as sponsored links to websites that offer services which compete with or rival, those services offered by Complainant, (2) the use of the disputed domain name is disruptive to Complainant, as potential consumers are likely to be confused into believing that Respondent’s website is somehow affiliated with, or sponsored by, Complainant, (3) the purpose behind the registration of the disputed domain name was to piggyback on the goodwill associated with Complainant’s PETROSKILL trademark by capitalizing on a typographical error, in an attempt to exploit, for commercial gain, Internet traffic probably destined for Complainant, (4) Respondent is offering to sell the disputed domain name for USD 4,750 which is well in excess of Respondent’s domain name registration fees. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That 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.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. Language of Proceedings
For the following reasons, the Panel decides that English be the language of proceedings:
As a general rule, paragraph 11 of the Rules provides that the language of proceedings shall be the language of the registration agreement, unless otherwise agreed by the parties or subject to the Panel’s authority.
Despite of the fact that the Registrar confirmed on October 11, 2013 that the language of the registration agreement was Slovak, this Panel, in accordance with a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3), finds (1) that there is reason to believe that Respondent can well understand the English language as the website to which the disputed domain name redirects is set up in English, inclusive of the offer to sell the disputed domain name, (2) Respondent has been given a fair chance to object to Complainant’s request that English be the language of the proceeding as on October 16, 2013, the Center transmitted an email to the parties in both Slovak and English regarding the question of the language of the proceeding on which Respondent did not comment. Moreover, Respondent apparently decided to stay silent on any of Complainant’s contentions as Respondent did not file any response in due time.
Against this background, the Panel takes the view that it would constitute an unfair disadvantage to Complainant had it been forced to translate the Complaint into Slovak and/or to find a need that this proceeding be led in the Slovakian language.
Having said so, the Panel comes to the following decision: A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the PETROSKILLS trademark in which Complainant has shown to have rights.
The disputed domain name incorporates Complainant’s PETROSKILLS trademark in its entirety, except the typo-squatting arising from the addition of the letter “l” between the letters “o” and “s”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the domain name is at least confusingly similar to a registered trademark. The fact that the disputed domain name obviously includes a simple misspelling of Complainant’s PETROSKILLS trademark varying by just one added letter “l” is not at all in contrast to such finding of a confusing similarity, since typo-squatted domain names are on the contrary intended to be confusing so that Internet users, who unwillingly make common type errors, will enter the typo-squatted domain name instead of the correctly spelled trademark (see e.g.: Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC,WIPO Case No. D2011-1640; National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).
Therefore, the first element under the Policy as set forth by paragraph 4(a)(ii) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent made a legitimate noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain name resolves to a typical PPC website at “www.” which in turn redirects Internet users to a variety of third party’s websites which are not at all specifically tailored to Complainant but connect, inter alia, to some of Complainant’s (direct) competitors in the oil and gas training business.
The Panel, therefore, concludes that the disputed domain name obviously alludes to Complainant’s PETROSKILLS trademark and oil and gas training business. Such use of the disputed domain name to seek “pay-per-clicks” from those diverted Internet users who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s PETROSKILLS trademark and the intentional typo-squatting end up with Respondent’s Internet presence at “www.” is neither noncommercial, because it has the predominant purpose of generating advertising revenues, nor is it fair because Internet users by confusion are brought to a general website with information about a variety of matters that are not specifically tailored to Complainant, but on the contrary redirect to some of Complainant’s (direct) competitors on the oil and gas training market.
Moreover, such use is also not fulfilling the requirements of a bona fide offering of goods or services because (1) Respondent obviously has never been authorized to use Complainant’s PETROSKILLS trademark as a domain name or on Respondent’s website or in any other way and (2) Respondent’s name apparently does not correspond to Complainant’s trademark PETROSKILLS nor is there any other reasonable explanation apparent why Respondent should rely on the designation “petrolskills” as it is contained in the disputed domain name.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on October 25, 2013.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) as the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the direction of the disputed domain name, which is confusingly similar to Complainant’s PETROSKILLS trademark and obviously includes an intentional typo-squatting of the latter, to a typical PPC website with hyperlinks even to some of Complainant’s (direct) competitors in the oil and gas training business, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s PETROSKILLS trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product thereon. Such circumstances shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, the disputed domain name apparently is offered for sale at a price of USD 4,750, which indicates that Respondent apparently registered the disputed domain name for the purpose of selling it for valuable consideration in excess of Respondent’s documented out-of-pocket costs related to the disputed domain name, which in turn shall be evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
Against this background, the Panel finds that also the third element set forth under paragraph 4(a)(iii) of the Policy is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 Complainant.
Stephanie G. Hartung
Sole Panelist
Date: December 10, 2013
1 In accordance with Complainant’s amended Complaint of October 24, 2013, the term “Respondent” as used by the Panel in the case at hand refers exclusively to Shlomo Icik of Bratislava, Slovakia, who was confirmed by the Registrar on October 11, 2013 to be the underlying Registrant of the disputed domain name.
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