Complainant is Halliburton Energy Services, Inc, United States of America (“United States” or “U.S.”), represented by Polsinelli PC Law firm, United States.
Respondent is Puriso Caner, United Kingdom.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2021. On September 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 2021, 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 Complainant on September 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 21, 2021.
The Center verified that Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on September 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 18, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on November 1, 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 BackgroundComplainant states that it is a U.S. energy company providing its products and services to clients for more than a century. Complainant states that it has operations in approximately 80 countries and provides multiple products and services to the oil and gas industry.
Complainant is the owner of numerous registrations for the word mark HALLIBURTON (“Complainant’s Mark”) in multiple jurisdictions including, relevant to this proceeding, U.S. Trademark Registration No. 2,575,819 (filed on March 13, 2001; registered on June 4, 2002) in international classes 37, 40, and 42; and U.S. Trademark Registration No. 2,575,840 (filed on March 23, 2001; registered on June 4, 2002) in international classes 1, 6, 7, 9, and 16.
Complainant also owns the domain name
The disputed domain name was registered on October 29, 2020. The disputed domain name is currently inactive.
5. Parties’ Contentions A. ComplainantComplainant alleges that the disputed domain name is confusingly similar to Complainant’s HALLIBURTON Mark because it reproduces identically and entirely the HALLIBURTON mark, with the addition of the letter “s” between the “r” and “t”.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use.
Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent attempted to defraud Complainant by using the disputed domain name in email addresses to impersonate an Accounts Payable employee of Complainant.
Complainant request the transfer of the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in Complainant’s favor only after Complainant has proven that the above elements are present.
A. Identical or Confusingly SimilarUnder paragraph 4(a)(i) of the Policy, Complainant is required to establish that the disputed Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has provided sufficient evidence to show that it is the owner of and has rights in and to Complainant’s Mark. A review of the disputed domain name shows that the disputed domain name comprises Complainant’s Mark HALLIBURTON in its entirety, having added just the letter “s” to between the letters “r” and “t” in the “burton” element of Complainant’s Mark. Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant trademark.
Based on this uncontested evidence, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s Mark, in which Complainant has rights, and that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsUnder the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
In this case, the Panel finds that Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the HALLIBURTON Mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services (see next point in this decision), nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Rather, the illegal use of the disputed domain name can never confer rights or legitimate interests upon Respondent. Section 2.13, WIPO Overview 3.0.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad FaithComplainant contends that Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) 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, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
Based upon the undisputed evidence submitted by Complainant, the Panel finds that Respondent clearly had actual knowledge of Complainant’s Mark when registering the disputed Domain Name. This finding is supported by the uncontested evidence showing that the registration of the disputed domain name by Respondent in no way pre-dates Complainant’s substantially earlier registration dates for Complainant’s Mark.
According to the Complaint, Respondent attempted to defraud Complainant on October 30, 2020, by using the disputed domain name in an email address to impersonate an Accounts Payable employee of Complainant. The fraudulent email, which mentioned a refund and updated banking information was sent to a customer of Complainant’s. Respondent has not denied this assertion. The Panel is of the view that this is evidence of bad faith use of the disputed domain name.
Considering the above evidence and findings, the Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
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
Pablo A. Palazzi
Sole Panelist
Date: November 15, 2021