The Complainant is Marathon Petroleum Company LP of Findlay, Ohio, United States of America (the “United States” or “U.S.”), represented by Emch, Schaffer, Schaub & Porcello Co., L.P.A., United States.
The Respondent is Maatschap Europoort of Rotterdam, Netherlands / Protection of Private Person, R Protection Service, Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 the Complainant on July 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Registrar further informed the Center that the language of the Registration Agreement for the disputed domain names was Russian. On July 28, 2016, the Center sent the the language of the proceedings document in both English and Russian, and invited the Complainant to state its position on this issue by July 30, 2016, and the Respondent by August 2, 2016. On July 28, 2016, the Complainant filed an amended Complaint with arguments requesting the language of the proceeding to be English. The Respondent did not express any views on this issue.
The Center verified that 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 the Respondent of the Complaint in both English and Russian, and the proceedings commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified in both English and Russian, the Respondent’s default on August 25, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on September 6, 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.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Complainant requests that the language of the proceedings be English. In support of its request, the Complainant points out that the Respondent is fluent in English, while the Complainant cannot communicate in Russian, that the Complainant would incur substantial additional expense and the proceedings would be unnecessarily delayed if the Complainant is required to translate the Complaint into Russian. The Complainant further points out that the Respondent’s website at the disputed domain name is in English, that the Respondent has communicated with third parties in English and has sent them invoices and contracts in the English language. In addition, the Respondent’s native language does not appear to be Russian, as the Respondent is located in The Netherlands, not in the Russian Federation.
The Respondent has not denied the Complainant’s statements on the issue and has not expressed any preference as to the language of the proceeding. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that rendering this decision in English will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or the English language. 4. Factual Background
The Complainant is a company that operates in the downstream oil business, including oil refining, wholesale and retail fuel sales, vehicle service station and gas station services, sales of oil, greases, lubricants, asphalt, aromatic hydrocarbons and anti-freeze; storage, transportation, delivery and distribution of oil, gas and gases via tanks, terminals, pipeline, truck, train and marine vessels.
The Complainant owns a number of registrations for trademarks that include the word “marathon” (“the MARATHON trademark”), including the following registrations:
- The combined trademark MARATHON with registration No. 97,301, registered on May 26, 1914 in the United States for goods in International Class 4;
- The combined trademark M MARATHON with registration No. 743,273, registered on January 8, 1963 in the United States for goods in International Class 4;
- The word trademark MARATHON with registration No. 1,619,056, registered on October 23, 1990 in the United States for services in International Class 37; and
- The word trademark MARATHON with registration No. 1,619,359, registered on October 30, 1990 in the United States for goods in International Class 4.
The disputed domain name was registered on May 19, 2016. 5. Parties’ Contentions A. Complainant
The Complainant points out that the MARATHON trademark has been widely used as part of its company name and as trade and service marks for the Complainant’s products and services for decades, and in some cases for over one hundred years.
The Complainant submits that the disputed domain name is identical or confusingly similar to the MARATHON trademark. The disputed domain name incorporates the MARATHON trademark in its entirety, and the only difference between the MARATHON trademark and the disputed domain name is the addition of the word “tanking” in the disputed domain name. A “tank” has many uses in the oil industry but its most general meaning is “a container that holds liquids or compressed gasses”.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that it has no relationship with the Respondent, and has not given to the Respondent any permission to use the MARATHON trademark in any way. The Complainant has prior rights in the MARATHON trademark which precede the Respondent’s registration of the disputed domain name by almost a century. The Respondent could not possibly use the MARATHON trademark as a domain name in the petroleum industry without violating the Complainant’s prior trade and service mark rights. The MARATHON trademark is used exclusively by the Complainant as a trade and service mark for its goods and services and any subsequent use of the MARATHON mark in the petroleum industry would be in violation of the Complainant’s rights.
The Complainant points out that the Respondent uses the term “tanking” in a generic or descriptive sense to identify services directed towards the sale, maintenance and use of petroleum tanks for the storage and transportation of petroleum products. Thus, the Respondent falsely indicates to potential customers that they are doing business with a branch of the Complainant that specializes in petroleum “tanking” and transportation related services.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. Immediately after the registration of the disputed domain name, the Respondent started using it for a website that infringes the Complainant’s MARATHON trademark, impersonates Complainant and misappropriates the identity of an officer of one of the Complainant’s affiliated entities. The Respondent fraudulently solicits the sale of petroleum products and tanking services and uses phony invoices and phony contracts, apparently attempting to phish for payment from unwitting third parties who believe they are doing business with Complainant or its affiliates. The Respondent’s website is designed to appear like a website for an authentic division or affiliate of the Complainant, and features the Complainant’s registered trademarks, the address of the Complainant’s headquarters in Findlay, Ohio, and a fake stock ticker alleging to show the price of the Complainant’s stock on the U.S. Stock Exchange. The Complainant points out that it offers the same goods and services that are fraudulently advertised by the Respondent as offered by “Marathon Tanking” on the website at the disputed domain name. The Respondent also uses the disputed domain name to host email and facilitate communication with the targets of its fraud. The Complainant has received a number of calls and emails from confused customers inquiring as to the relationship between “Marathon Tanking” and the Complainant.
In view of the above, the Complainant sums up that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the MARATHON trademark as to the source, sponsorship, affiliation or endorsement of the Respondent. The Respondent’s use of the MARATHON trademark on the website hosted at the disputed domain name evidences the Respondent’s intent to cause confusion with the Complainant and the Respondent’s knowledge of the goods and services offered by the Complainant under MARATHON trademark. According to the Complainant, it would be difficult, and maybe impossible, for the Respondent to use the disputed domain name as the name of any business, product or service, or for other commercial purposes in the petroleum industry without violating the Complainant’s rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 is 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 name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainants and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the MARATHON trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD part of the disputed domain name.
In view of the above, the relevant section of the disputed domain name is “marathontanking”. This section contains two elements – “marathon” and “tanking”. The “marathon” element is identical to the distinctive word element of the MARATHON trademark, while the “tanking” element refers to the oil industry. The combination of these two elements is likely to appear to Internet users as representing an online location connected to some of the activities carried out by the Complainant. Therefore, the Panel finds that the disputed domain name is confusingly similar to the MARATHON trademark in which the Complainant has rights. B. Rights or Legitimate Interests
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 of WIPO Panel Views on Selected UDRP Questions, Second Edition (“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 commonly known by the MARATHON trademark, has not been authorized by the Complainant to use the MARATHON trademark, and has carried out illegitimate activities through the disputed domain name. According to the Complainant, the Respondent uses the disputed domain name for a website that incorporates the Complainant’s MARATHON trademark, impersonates Complainant and misappropriates the identity of an officer of one of the Complainant’s affiliated entities. The Respondent fraudulently solicits the sale of petroleum products and tanking services and uses phony invoices and phony contracts, apparently attempting to phish for payment from unwitting third parties who believe they are doing business with Complainant or its affiliates. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the case file that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the MARATHON trademark of the Complainant and includes the descriptive term “tanking” which refers to the Complainant’s business in the oil industry. The website associated to the disputed domain name is designed to appear as an official website location of the Complainant and offers to Internet users certain products and services that compete with the Complainant’s products and services. This satisfies the Panel that the Respondent must have been aware of the MARATHON trademark when it registered the disputed domain name, and that it targeted the MARATHON trademark when it chose what domain name to register. It appears likely that, having received the Respondent’s contracts and invoices and having viewed its website, Internet users may be confused into believing that they are dealing with the Complainant. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests of the Respondent. Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
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 registration and use may be found on grounds otherwise satisfactory to the Panel.
The facts of this case show that the disputed domain name was registered with knowledge of the MARATHON trademark. The disputed domain name incorporates the MARATHON trademark and contains the “tanking” element which refers to the oil industry. The website associated with the disputed domain name includes the MARATHON trademark and the Complainant’s business address and offers products and services that compete with the Complainant’s. In the absence of any evidence to the contrary by the Respondent, the Panel is prepared to accept the Complainant’s contentions that, by registering and using the disputed domain name, the Respondent has intentionally attempted to exploit the goodwill of the Complainant’s MARATHON trademark to attract, for commercial gain, Internet users to the website associated to the disputed domain name by confusing them that they are dealing with the Complainant. This conduct of the Respondent supports a finding that the disputed domain name has been registered and is being used in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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.
Assen Alexiev
Sole Panelist
Date: September 25, 2016
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