Complainant is Halliburton Energy Services, Inc. of Houston, Texas, United States of America, represented by Novak Druce Connolly Bove & Quigg LLP, United States of America.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / KEEP MOUTH of Plattsmouth, Nebraska, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2016. On March 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 1, 2016, 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 Complainant on March 3, 2016 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 March 7, 2016
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2016.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 28, 2016. 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 states that it was founded in 1919 and is “one of the world’s largest providers of products and services to the energy industry”; that it employs “more than 65,000 employees, representing 140 nationalities in over 80 countries”; that it had annual revenue of USD 32.9 billion in 2014; and that it “is a leader in the global energy industry and has been the recipient of numerous industry awards and significant recognition.”
Complainant further states that it is the owner of the following trademark registrations in the United States for the mark HALLIBURTON (the “HALLIBURTON Trademarks”):
- U.S. Reg. No. 2,575, 819 (registered June 4, 2002), for use in connection with, inter alia, “oil, gas and geothermal well drilling, cementing and pressure grouting services.”
- U.S. Reg. No. 2,575,840 (registered June 4, 2002) for use in connection with, inter alia, “[c]hemicals for use in the construction, treatment, servicing, completion, and working of oil, gas, geothermal, and water wells, and for use in cleaning of industrial facilities.”
Complainant further states that it is the registrant of the domain name .
The Disputed Domain Name was created on February 17, 2016. Complainant states, and provides a declaration with evidence in support thereof, that “Respondents attempted to defraud the Complainant on February 18, 2016 by using the Disputed Domain Name in an email address, […]@, to impersonate the President of Halliburton within a day of Respondents registering the Disputed Domain Name. The fraudulent email was sent to a vendor in an attempt to secure a purchase for computer equipment in the amount of $42,494.51 allegedly on behalf of the Complainant on February 18, 2016.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the HALLIBURTON Trademarks because “[t]he Disputed Domain Name contains the entirety of Complainant’s well-known HALLIBURTON mark and simply adds the abbreviation ‘comp’ to signify either ‘Halliburton Company’…, the fraudulent business name provided in the signature block of ‘Jeff Miller,’ that it is the business of, or Halliburton’s division for, purchasing computers, or the fraudulent business pertains to matters of compensation. The exact meaning behind the term ‘comp’ is irrelevant” and “fails to dispel the confusing similarity between the Disputed Domain Name and the Complainant’s mark.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[b]y registering a domain name confusingly similar to Complainant’s well known HALLIBURTON mark and attempting to masquerade as a person who works at Halliburton, in order to fraudulently place orders for computers or obtain compensation, it is quite clear that the Respondents acquired the domain name for the sole purpose of exploiting and profiting from the Complainant’s rights, title, interest and goodwill in the HALLIBURTON mark through the perpetration of an identity theft scheme involving a fraudulent email address of the President of Halliburton” and not for “a bona fide offering of goods or services”; “Respondents’ intentional male fide use of the Disputed Domain Name in an attempt to profit from and exploit the Complainant’s HALLIBURTON mark through fraud”; and “[w]hile the Complainant is currently unaware of the Respondents’ true identity, the fraudulent email impersonates the President of Halliburton, which shows the Disputed Domain Name is clearly not derived from either Respondent’s name.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the HALLIBURTON Trademarks.
As to whether the Disputed Domain Name is identical or confusingly similar to the HALLIBURTON Trademarks, the relevant comparison to be made is with the second-level portion of this domain name only (i.e., “halliburtoncomp”), as it is well established that the Top-Level Domain (i.e., “.com”) may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”)
The Panel finds that “the dominant portion” of the Disputed Domain Name contains the HALLIBURTON Trademark and that the addition of the word “comp” is insufficient “to create a distinct domain name capable of overcoming a proper claim of confusingly similar.” F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger,WIPO Case No. D2007-0189. Indeed, a previous panel under the Policy found that inclusion of the word “comp” in a disputed domain name, in addition to a complainant’s trademark, “does not create [a] distinct domain name[] and does not overcome the confusing similarity.” State Farm Mutual Automobile Insurance Company v. Bryan Cruz, NAF Claim No. 766658.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[b]y registering a domain name confusingly similar to Complainant’s well known HALLIBURTON mark and attempting to masquerade as a person who works at Halliburton, in order to fraudulently place orders for computers or obtain compensation, it is quite clear that the Respondents acquired the domain name for the sole purpose of exploiting and profiting from the Complainant’s rights, title, interest and goodwill in the HALLIBURTON mark through the perpetration of an identity theft scheme involving a fraudulent email address of the President of Halliburton” and not for “a bona fide offering of goods or services”; “Respondents’ intentional male fide use of the Disputed Domain Name in an attempt to profit from and exploit the Complainant’s HALLIBURTON mark through fraud”; and “[w]hile the Complainant is currently unaware of the Respondents’ true identity, the fraudulent email impersonates the President of Halliburton, which shows the Disputed Domain Name is clearly not derived from either Respondent’s name.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the respondent has registered or the respondent has 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant states, and the Panel agrees, that “[t]he examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found.”
Here, it is apparent, and undisputed, that Respondent used the Disputed Domain Name in an effort to fraudulently obtain funds or computer equipment from a third party, using Complainant’s identity. Previous panels have readily found such conduct to constitute bad faith. See, e.g., SAP SE v. Name Redacted / Domains By Proxy, LLC,WIPO Case No. D2016-0410 (bad faith found where respondent used the disputed domain name to fraudulently order computer hard drives from a vendor while posing as an employee of complainant).
Accordingly, the Panel finds that Complainant has proven the third element 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.
Douglas M. Isenberg
Sole Panelist
Date: May 9, 2016
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