The Complainant is WPX Energy, Inc. of Tulsa, Oklahoma, United States of America (“U.S.”), represented by Crowe & Dunlevy, P.C., U.S.
The Respondent is Host Master, 1337 Services LLC of Charlestown, Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2018. On October 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2018, 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 October 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 1, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Center received email communications from a third party on November 7, 2018. The Respondent did not submit a response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on November 26, 2018.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on December 5, 2018. 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, WPX Energy, Inc., is an oil and gas exploration company that is traded publicly on the New York Stock Exchange. It is incorporated in the state of Delaware and its principle place of business is in Tulsa, Oklahoma.
The Complainant has proven to be the owner of the WPX ENERGY marks.
The Complainant is inter alia the owner of:
WPX ENERGY, U.S. Trademark Registration No. 4,165,560, registered on June 26, 2012, for gas production services and oil production services, in Class 40, and for exploration and searching of oil and gas, in Class 42.
WPX ENERGY (logo), U.S. Trademark Registration No. 4,302,164, registered on March 12, 2013, for gas production services and oil production services, in Class 40, and for exploration and searching of oil and gas, in Class 42.
The Complainant also registered as its domain name in March 2011 to facilitate its online business, and the Complainant continues to use this domain name at present.
The disputed domain name was registered on August 20, 2018.
The Complainant’s trademark and domain name registrations long predate the registration of the disputed domain name.
The disputed domain name was apparently used for a fraudulent email scheme and to redirect Internet users to the Complainant’s corporate website. Currently it does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the WPX ENERGY trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith.
The Complainant underlines that the Respondent’s bad faith is clearly shown by its use of the disputed domain name to impersonate the Complainant and in particular to create false emails purporting to be genuine emails from one of the Complainant’s senior executives. These false emails are then used to order goods from the Complainant's suppliers using the documents created for the purported transactions in order to attempt to have the Complainant pay for the goods and with the intention that the goods would be received by the Respondent free of charge. B. Respondent
The Respondent has not submitted a response, and has not replied to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) - (iii) of the Policy require that the Complainant demonstrates to the Panel that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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. A. Identical or Confusingly Similar
The Complainant has established rights in the WPX ENERGY trademarks.
The disputed domain name contains the Complainant’s marks in their entirety, with only two inconsequential differences between the disputed domain name and the WPX ENERGY marks: the addition of the term “us”, and the addition of a hyphen “-” between the term “us” and “”.
It is well established that where the Complainant’s trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.8. In the present case, the disputed domain name incorporates the Complainant’s WPX ENERGY trademark in its entirety with the addition of the term “us”. This is not sufficient to overcome a finding of confusing similarity pursuant to the Policy.
The mere addition of the hyphen between “us” and “” is not significant when examining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark under the Policy, paragraph 4(a)(i).
Therefore, the Panel finds the disputed domain name to be confusingly similar to the WPX ENERGY trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has no connection to or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to engage in any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In addition, the Respondent does not appear to be commonly known by the disputed domain name or by a similar name. Moreover, the Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
Finally, the Panel believes that the Respondent’s deceiving use of the disputed domain name does not constitute any bona fide offering of goods or services.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith.
Based on the evidence put forward by the Complainant, the Panel is of the opinion that the Respondent was aware of the Complainant’s trademark registrations and rights to the WPX ENERGY marks when it registered the disputed domain name.
The Respondent’s knowledge of the WPX ENERGY marks is particularly obvious, given the Respondent’s use of the disputed domain name to impersonate the Complainant and in particular to create false emails purporting to be genuine emails from one of the Complainant’s senior executives.
The Complainant submits that the Respondent posed as an employee of the Complainant in order to trick and defraud unwitting businesses into believing the requests for quotations were legitimate. The emails were sent to various companies with the subject line “WPX Energy Inc. – Request For Quotation” requesting quotes on computers and other electronic equipment.
Therefore, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its areas of business at the time of registration of the disputed domain name.
Moreover, the Panel notes the following:
The Respondent has created a likelihood of confusion with the Complainant and its trademark by registering the disputed domain name that incorporates the Complainant’s trademark in its entirety while merely adding the term “us” to said trademark. This confuses Internet users looking for the Complainant’s products and services, and misleads them as to the source of the disputed domain name.
The Respondent registered and is using the disputed domain name in order to infringe the Complainant’s rights in its WPX ENERGY marks, and to trade off the Complainant’s goodwill.
In particular, the Complainant has shown that the Respondent is using the disputed domain name to intentionally defraud and confuse businesses to believe that orders (placed by the Respondent) for electronic equipment are from the Complainant (thereby infringing the Complainant’s trademark rights and also damaging its reputation).
Accordingly, the Panel finds that the Complainant has satisfied 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.
Fabrizio Bedarida
Sole Panelist
Date: December 13, 2018
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