The Complainant is Tauber Oil Company of Houston, Texas, United States of America, represented by Strasburger & Price, LLP, United States of America.
The Respondent is Denis E Sergeev of Odintsovo, Moskovskaya oblast, the Russian Federation, represented by LLC Standmark, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on June 23, 2016. On June 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 2016 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. On July 15, 2016, the Respondent requested a five day extension of the deadline for submission of a Response. On the same date, the Center extended the deadline for submission of a Response until July 23, 2016. The Response was filed with the Center on July 22, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on August 3, 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
The Complainant is an oil and gas company with corporate offices in Houston, Texas. It is an independent marketer of petroleum and petrochemical products for major and independent oil companies, major petrochemical producers and consumers, and small to medium sized end users. The Complainant offers its goods and services through various affiliated companies which include Tauber Oil Company, Tauber Exploration & Production Co. and Tauber Petrochemical Co. The Complainant submits that it has operations in various regions of the world, including Asia, Latin America and Europe, including the Russian Federation.
The Complainant asserts that it has trademark rights in a variety of combined trademarks that include the prominent word element “TAUBER”. This trademark was first used in 1953 for various oil and gas goods and services. The Complainant submits that it advertises its TAUBER trademark through traditional marketing materials and on the Internet where it has used the domain name since 1996. According to the Complainant, due to its longtime use and the quality of goods and services offered by Complainant and its related companies, the TAUBER trademark has become well-known in the oil and gas industry.
The disputed domain name was registered on December 10, 2001. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is identical or confusingly similar to the TAUBER trademark in which the Complainant claims to have rights.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not endorse the Respondent, and the Respondent is not an officer, employee, contractor or agent of the Complainant. The Complainant asserts that the Respondent has registered the disputed domain name without any authority or permission from the Complainant and long after the Complainant had started using the TAUBER trademark. The website at the disputed domain name displays a combined brand that includes a logo and a “TAUBER” word element, and, according to the Complainant, misleadingly appears to be related to the Complainant. The same website provides information about various oil and gas goods and services. The Complainant submits that the Respondent is using the disputed domain name to confuse users into believing that its website is affiliated to the Complainant, without offering any legitimate goods or services. The Complainant points out that it uses the TAUBER trademark and offers goods and services in the Russian Federation, so its customers and potential customers would be confused by the website located at the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. Despite having no rights in the TAUBER trademark, the Respondent registered the disputed domain name to create a likelihood of confusion with the Complainant’s TAUBER trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. B. Respondent
The Respondent asserts that none of the three conditions required under the Policy has been met by the Complainant and requests the Complaint to be denied.
The Respondent points out that the Complainant does not refer to any registered trademarks but rather alleges that it has rights in various unregistered trademarks. However, the Complainant has not established that it has any common law or unregistered mark rights in the “Tauber” name as required in accordance with the well-established practice under the Policy.
According to the Respondent, “Tauber” is a surname common in German-speaking countries, and that surname is widely used for various businesses and projects in the world. Tauber is also a river in Germany. Numerous “Tauber” trademarks belong to and owned by different owners and applicants in different states, including the United States, Germany, Brazil and the Russian Federation, and are used throughout the world by different entities and individuals. Therefore, the word “Tauber” does not have a particularly strong connection with the Complainant. The only evidence provided by the Complainant about the popularity of its trademark consists of screenshots from the Complainant’s website. This evidence does not support this claim that its company is known outside Texas and the United States. There is no information that the Complainant does business anywhere outside of Texas, and that consumers outside of Texas could be aware of its business and reputation. While the Complainant may have certain reputation in Texas, this is not enough to establish any trademark rights, including unregistered or “common law” rights, required for the purpose of the Policy.
The Respondent Denis Sergeev is one of the shareholders and founders of the Limited Liability Company “Tauber” or “LLC Tauber Russia”, established in 2008. The beneficial owner of the disputed domain name is LLC Tauber Russia. The Respondent registered the disputed domain name and is using it in the interests of LLC Tauber Russia. The fact that the Respondent is not the beneficial owner of the disputed domain name does not mean absence of legitimate rights and interests as long as the beneficial owner satisfies the criteria provided in paragraph 4(c) of the Policy.
According to the Respondent, LLC Tauber Russia uses the disputed domain name for a bona fide offering of goods and services. It has never alleged that it is somehow related or affiliated with the Complainant. LLC Tauber Russia has stated on its website that it has been doing business under the trademark “TAUBER” since 2008 and works with leading Russian and interactional customers such as Moscow international airports “Sheremetyevo” and “Domodedovo”. It is an engineering company and it sells various goods such as pipes and pumps and provides related services. Therefore, the Respondent and his company do not in any way confuse consumers as to their business and identity. The company conducts a genuine business activity and has listed on its website all relevant contact details and information. LLC Tauber Russia currently has fourteen employees, and its annual turnover in 2015 was about seven million USD.
The Respondent submits that it is not a cybersquatter, does not register domain names for sale and has never had any previous communications with the Complainant. Neither it nor LLC Tauber Russia was aware of Complainant’s business prior to the proceeding. Since the Complainant does not have and has never had any trademark rights in the Russian Federation and does not do business in Russia, it is unclear how the Respondent or LLC Tauber Russia could have learned about the Complainant. If the search term “Tauber” is entered into the popular Russian search engine at no top results lead to Complainant’s website or mention the Complainant. Rather, the first four search results are webpages of the Respondent’s company.
The Respondent contends that there can be no consumer confusion between the disputed domain name and the Complainant since LLC Tauber Russia has been on the Russian market for many years and has never claimed any affiliation with any foreign company. It is unclear why Russian consumers should confuse a Russian business with a company from Texas, United States.
LLC Tauber Russia is the owner of a Russian national trademark registration for “TAUBER” with registration No.565871, registered on February 26, 2016, with application and priority date October 3, 2014, for goods and services in International Classes 06, 07, 08, 11, 17, 19, 35 and 37. The trademark of the beneficial owner of the disputed domain name was applied for a long time before the proceedings were initiated by the Complainant. LLC Tauber Russia has been doing business since 2008, and the registration of its “TAUBER” trademark in the Russian Federation was a continuation of the company’s business activity. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant rights.
The Complainant must first demonstrate that it has rights in a trademark. The Complainant has not claimed to have any trademark registrations in its Complaint, but has rather asserted that it has trademark rights over a variety of trademarks that include the prominent word element “TAUBER”, and that its trademarks rights have arisen as a result of a long term use of its trade name Tauber Oil Company and of the quality of the goods and services offered by the Complainant. The Complainant has asserted that the TAUBER trademark has become well-known in the oil and gas industry.
Therefore, the issue is whether the Complainant has rights over unregistered trademarks for the purposes of the first element of the test under Policy, paragraph 4(a). As discussed in Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the Complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some UDRP panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Unless such status is objectively clear, UDRP panels will be unlikely to take bald claims of trademark reputation for granted.
Here, the Complainant has not provided sufficient evidence to support its claim for having trademark rights over the name “Tauber”. The Complainant has only provided snapshots of its corporate website, and there is no information and evidence about the length and amount of sales under the trademark, about the nature and extent of advertising, no consumer surveys or media articles. As submitted by the Respondent, “Tauber” appears to be a name used by a number of businesses unrelated to the Complainant.
Taking the above into account, the Panel is not satisfied that the Complainant has established trademark rights for the purposes of this proceeding.
In these circumstances, the Panel does not need to address the issue of whether the disputed domain name is identical or confusingly similar to the TAUBER trademark over which the Complainant claims to have trademark rights, or indeed examine any of the other elements of the test under Policy, paragraph 4(a).
Nevertheless, for completeness the Panel will address these issues as well. B. Rights or Legitimate Interests
The second element that has to be proven by the Complainant is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides the following illustrative examples of situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the 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 [the Respondent] 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 Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0”.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not an agent of the Complainant and has registered the disputed domain name without any permission from the Complainant and long after the Complainant had started using the TAUBER trademark. The Complainant submits that the Respondent is using the disputed domain name to confuse users into believing that its website is affiliated to the Complainant, without offering any legitimate goods or services. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In its defense, the Respondent has claimed that the beneficial owner of the disputed domain name is the company LLC Tauber Russia, in which the Respondent is a shareholder. According to the case file LLC Tauber Russia uses the disputed domain name for a bona fide offering of goods and services and not for misleading consumers that it is somehow related or affiliated with the Complainant. The Respondent has pointed out that LLC Tauber Russia is the owner of a Russian national trademark registration for “TAUBER”. The Respondent has further claimed that neither it nor LLC Tauber Russia was aware of Complainant prior to the proceeding, and has denied that the Complainant has any business in the Russian Federation.
The Panel will discuss each of these defenses in turn.
The Respondent has provided evidence that the company LLC Tauber Russia was registered in 2008 and that the Respondent is a shareholder in it. In the Panel’s view if correct, this is sufficient to establish that there is a link between the Respondent and the company that is relevant for the examination of whether the Respondent has rights and legitimate interests in the disputed domain name.
The website at the disputed domain name is well developed and has many sections that describe the activities of the company LLC Tauber Russia. In the absence of any evidence to the contrary, the Panel is prepared to accept that this is a genuine website of a company that offers the products and services and carries out the activities listed on the website. The website features a prominent logo containing a graphic “T” element and the word element “Tauber” on a rectangular red background, and there is no mention of the Complainant on the website. The Complainant describes itself as a marketer of petroleum and petrochemical products for major and independent oil companies, while the website at the disputed domain name describes LLC Tauber Russia as an engineering company supplying pipes and fuel equipment to airports and energy companies. These activities appear to be sufficiently different so that the Parties do not seem to be engaged in directly competing activities. Taking the above into account, the Panel is not convinced by the allegations of the Complainant that the Respondent is using the disputed domain name to confuse users into believing that its website is affiliated to the Complainant and is not offering any legitimate goods or services.
The Respondent has further referred to a trademark registration for “Tauber” made by LLC Tauber Russia. As stated by the Respondent, this trademark registration appears in the official trademark register of the Russian Federation as a valid registration. As discussed in Paragraph 2.7 of the WIPO Overview 2.0, Panels have tended to recognize that a respondent’s registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the Policy. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the Policy.
As submitted by the Respondent in this regard, the chronology of events is an important factor in determining whether the trademark application was bona fide or merely a way of bolstering an abusive domain name registration. In the present case, there is no evidence that would support a finding of the latter. The trademark application was made in 2014, and there is no evidence in the case that the Respondent or LLC Tauber Russia were aware of the Complainant and of its claims at that time. Rather, it appears more likely than not that the trademark application was made in furtherance of the activities of the company and without any targeting of the Complainant. In result, the Panel is of the opinion that the existence of the trademark registration for “Tauber” made by LLC Tauber Russia supports a finding that the Respondent has rights and legitimate interests in the disputed domain name.
In view of all above, the Panel is of the opinion that the Respondent has rebutted the Complainant’s prima facie case and that the Complainant has not established the lack of rights and legitimate interests of the Respondent in the disputed domain name. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 that 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 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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith may be found on grounds otherwise satisfactory to the Panel. A finding that a domain name has been registered and is being used in bad faith usually involves a situation where the respondent has registered and is using the disputed domain name to take advantage of its significance as a trademark of the complainant.
In the present case, the Complainant argues that the Respondent has registered and used the disputed domain name in bad faith because the main motive behind the actions of the Respondent was to create a likelihood of confusion with the Complainant’s TAUBER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The evidence brought before the Panel does not lead to the conclusion that the Respondent’s behavior with respect to the disputed domain name is in bad faith. It has not been established that the Respondent has registered the disputed domain name in order to trade off the goodwill of the Complainant. As asserted by the Respondent, the disputed domain name also represents a German surname, and it has not been established that the Respondent knew of the Complainant at the time of the registration of the disputed domain name. The Complainant has provided no evidence that it uses the TAUBER trademark and offers goods and services in the Russian Federation or that the Complainant is known on the Russian market, and the Complainant has not established that has any trademark rights for the name “Tauber” that extend to the territory of the Russian Federation. The website at the disputed domain name is well developed and appears to be genuine. Without any evidence to the contrary, in these circumstances it appears more likely that the Respondent has registered the disputed domain name for its own commercial purposes without targeting the Complainant.
For these reasons, the Panel finds that the Complainant has failed to establish that the Respondent has registered and used the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Date: September 6, 2016
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