The Complainant is Gearench, United States of America (“United States”), represented by Brandstock Domains GmbH, Germany.
The Respondent is Domain Admin,Whois Privacy Corp., Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 14, 2021, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 7, 2021. 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 BackgroundThe Complainant was founded in 1927 in Texas as Gearench Manufacturing Company, by J. A. Peterson and C. E. “Pat” Olsen, from whose names the PETOL trademark derives and which has been in use as early as 1928 in connection with products for use in the oil industry. Presently, the PETOL trademark is used in connection with over 40 product lines including exploration, drilling, production, refining and completion.
The Complainant, in addition to the several domain names such as
United States trademark registration No. 1,163,394 for the word mark PETOL, filed on February 21, 1979, registered on August 4, 1981, and subsequently renewed, claiming first use in commerce on June 6, 1928, in international classes 06 and 08;
United States trademark registration No. 4,386,643 for the word mark PETOL, filed on July 2, 2012, registered on June 4, 2013, claiming first use in commerce on December 31, 1931, in international class 07; and
United States trademark registration No. 4,729,947 for the word mark PETOL, filed on August 14, 2013, registered on February 17, 2015, claiming first use in commerce on June 6, 1928, in international classes 06, 08 and 09.
The disputed domain name
The Complainant asserts to manufacture over 40 product lines for use in various areas of the oil industry including exploration, drilling, production, refining and completion, also having developed tools for water wells and trenchless technology drilling, as well as mining, power generation utilities, having used the well-known GEARENCH and PETOL trademarks since as early as 1926 in the United States.
Under the Complainant’s view, the disputed domain name reproduces its trademark in its entirety with the addition of the letters “us” which refer to the United States and only serve to accentuate the resemblance with the Complainant, based in that country and is thus confusingly similar therewith.
Moreover, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not commonly known by the disputed domain name;
(ii) the Respondent has not acquired any trademark related to the PETOL term (Annex 5 to the Complaint);
(iii) the Respondent reproduces the Complainant’s trademark without any license or authorization from the Complainant; and
(iv) the Respondent’s use of the disputed domain name does not characterize a bona fide offering of goods or services under the Policy.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given the Respondent’s choice of the disputed domain name which cannot have been accidental and must have been influenced by the fame of the Complainant’s trademarks, as a simple online search yields results only related to the Complainant and its well-known PETOL and GEARENCH trademarks.
In addition to that the disputed domain name is being offered for sale on the trading platform Afternic for a minimum of USD 999 (Annex 13 to the Complaint), in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name and corroborates the Respondent’s bad faith conduct, further reinforced by the use of the disputed domain name in connection with fraudulent webpages and by the Respondent’s choice to retain a privacy protection service to hide his or her identity in an attempt to escape this proceeding.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly SimilarThe Complainant has established its rights in the registered PETOL trademark.
The Panel finds that the disputed domain name reproduces the Complainant’s trademark entirely and is therefore confusingly similar to it. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The first element of the Policy has therefore been established.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights to or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice 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, in spite of not having acquired 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 Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent reproduces the Complainant’s trademark without any license or authorization from the Complainant.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, in addition to the use made of the disputed domain name in connection with fraudulent webpages corroborates the absence of any rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
The second element of the Policy has therefore been established.
C. Registered and Used in Bad FaithThe Policy indicates in paragraph 4(b) that bad faith registration and use can be found in view of:
(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants who are the owner of a trademark relating to the disputed domain name or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The registration and use of the disputed domain name in bad faith can be found in the present case in view of the following circumstances:
(i) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name;
(ii) the disputed domain name is being offered for sale for the amount of USD 999 which is an amount in excess of out-of-pocket costs incurred in the registration of the disputed domain name;
(iii) the well-known status of the Complainant’s trademark and the nature of the disputed domain name (reproducing the entirety of the Complainant’s trademark), along its use for fraudulent schemes, suggests rather a clear indication of the Respondent’s registration and holding of the disputed domain name in bad faith, with the implausibility of any good faith use to which the disputed domain name may be put; and
(iv) the choice to retain a privacy protection service to conceal the Respondent’s true identity.
For the reasons stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith.
The third element of the Policy has therefore been established.
7. DecisionFor 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
Wilson Pinheiro Jabur
Sole Panelist
Date: September 21, 2021