The Complainant is Subsea 7 Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Mark Chris, darkknightspam, Nigeria. 2. The Domain Name and Registrar
The disputed domain name is registered with N, Inc. (N LLC) (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2019. On July 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 9, 2019, 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.
The Center appointed Cherise Valles as the sole panelist in this matter on August 12, 2019. 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 a world-leading seabed-to-surface engineering construction and services contractor to the offshore energy industry. It was first listed on the Oslo Bors Stock Exchange on June 5, 1997. On February 22, 2018, the Complainant made a series of high-profile press releases announcing the extension of the partnership between the Complainant and OneSubsea, a division of the NYSE-listed company Schlumberger.
The Complainant owns a number of trademarks in jurisdictions around the world for the term SUBSEA 7, including the following:
- United Kingdom trademark No. UK00002304950 for SUBSEA 7, registered on April 21, 2006, in classes 7, 37, 39 and 42;
- European Union Trade Mark No. 011426335 for SUBSEA 7, registered on May 13, 2013, in classes 7, 37, 39 and 42;
- International trademark No. 1147789 for SUBSEA 7, registered on December 14, 2012, in classes 7, 37, 39 and 42;
- European Union Trade Mark No. 011426426 for the SUBSEA 7 logo, registered on May 13, 2013, in classes 7, 37, 39 and 42; and
- International trademark No. 1147588 for the SUBSEA 7 logo, registered on December 14, 2012, in classes 7, 37, 39 and 42.
The disputed domain name was registered on June 24, 2019 and resolves to a blank webpage containing a broken link. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered trademark, SUBSEA 7, in light of the fact that it is virtually identical to the Complainant’s mark and there is a deliberate misspelling of the Complainant’s trademark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term SUBSEA 7 and the SUBSEA 7 logo, as indicated in Section 4 above. The disputed domain name is virtually identical to the Complainant’s trademark, differing only from the Complainant’s trademarks in the transposition of two letters.
Previous UDRP panels have held that the Top-Level Domain “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.
In the light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):
“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. See Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004.
There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use, the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. The term “subsae7” is not descriptive in any way, nor does the combination of words and numerals have any generic, dictionary meaning. To the best of the Complainant’s knowledge, the Respondent is not commonly-known as “subsae7”.
The disputed domain name resolves to a blank web page containing a broken link. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its website 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 the respondent’s website or location or of a product or service on its website or location.
The Respondent registered the disputed domain name as a deliberate misspelling of the Complainant’s marks immediately following high-profile press releases about the Complainant. This suggests that the Respondent registered the disputed domain name in bad faith deliberately to create a likelihood of confusion between the disputed domain name and the Complainant’s SUBSEA 7 mark. Moreover, at the time of registration of the disputed domain name, the Complainant had enjoyed international success for over two decades. Previous UDRP panels have found that a respondent’s actual or constructive knowledge of a complainant’s rights in a domain name at the time of registration reinforces a finding of bad faith.
The fact that the disputed domain name is being passively held by the Respondent cannot constitute bona fide use since such use constitutes a blocking registration, nor can it confer any rights or legitimate interests in this domain name. Previous UDRP panels have found that there can be a finding of registration and use in bad faith where there is passive use of a widely-known trade mark in a domain name where there is no response and no explanation as to why the use could be made in good faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Respondent’s organization name is “DarkKnightSpam”. This suggests that the purpose of the Respondent’s organization is to undertake spam activity. The Panel finds it is likely that if the Respondent does use the disputed domain name to resolve to a website, such website will be designed to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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.
Cherise Valles
Sole Panelist
Date: August 23, 2019
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