The Complainant is IFP Energies Nouvelles, France, represented by Plasseraud IP, France.
The Respondent is Contact Privacy Inc. Customer 0128917969, Canada / David Weldon, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 29, 2021. On September 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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 the Complainant on September 30, 2021 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on October 4, 2021.
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 October 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on November 3, 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 is a company formed in 1944, which provides research and training services in the fields of energy, transport and the environment. These activities include the provision of apparatus and analysis services to assist with geochemical studies for oil and gas exploration. Its pyrolysis-related process and services are provided under the mark ROCK-EVAL and the Complainant has registered trade marks in many countries to protect this trading style. These include, by way of example only, the United States trade mark, registration number 1290739, for ROCK-EVAL, in classes 9 and 42, registered on August 21, 1984, and the French trade mark, registration number 1383640, for ROCK-EVAL, in classes 9, 40 and 42, registered on December 10, 1986.
The disputed domain name was registered on September 23, 2011. The Complainant’s representative contacted the Respondent and its company Wildcat Technologies, one of the Complainant’s competitors, back in 2012 regarding Wildcat Technologies’ use of the Complainant’s ROCK-EVAL trade mark on the website of Wildcat Technologies. The existence of the disputed domain name came to the Complainant’s attention in January 2020, at which point it redirected to the website of Wildcat Technologies. This company also develops instruments used for petroleum exploration and markets a process, which has similar applications and functionality to the Complainant’s Rock-Eval product. The Complainant’s representatives wrote to Wildcat Technologies, on January 31, 2020, seeking to recover the disputed domain name. Correspondence between the Parties’ representatives ensued in which Wildcat Technologies, the President of which was eventually found to be the underlying registrant of the disputed domain name and the personal-named Respondent to these proceedings. The representatives for Wildcat Technologies indicated that their client would be willing to arrange for the transfer of the disputed domain name to the Complainant in return for a payment of USD 7,500. Further negotiations ensued regarding both the price and the terms of transfer, but the Parties were not ultimately able to reach agreement.
The disputed domain name currently resolves to a holding page with a notice stating, “rock-eval.com” is a totally awesome idea still being worked on. “Check back later.”1
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its trade mark registrations for ROCK-EVAL, full details of two of these registrations having been provided above, and says that the services it provides under this mark are widely recognized within its industry sector as denoting the Complainant’s technology. As the generic Top-Level Domain (“gTLD”) “.com” is ignored for the purposes of the comparison, the disputed domain name reproduces the Complainant’s mark exactly.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name does not correspond either to the name of the Respondent nor to any trade mark registered in its name. The Complainant has never granted the Respondent any licence or other rights to use its ROCK-EVAL trade mark, nor to use any domain names incorporating it. Moreover, there is no evidence of any fair or noncommercial or bona fide use of the disputed domain name by the Respondent. Neither the initial use of the disputed domain name to resolve to the website of Wildcat Technologies nor its current inactive status comprises use in connection with a bona fide offering of goods and services.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. As at the date of registration of the disputed domain name in September 2011, the Complainant’s ROCK-EVAL trade mark was well known in the petroleum industry as the Complainant’s pyrolysis process is the most established and widely used form of geological analysis used in the sector. Wildcat Technologies markets pyrolysis instruments and processes which compete with the services of the Complainant identified by its ROCK-EVAL trade mark and the Respondent was necessarily aware of the existence of the Complainant’s rights as at the date of registration of the disputed domain name. The disputed domain name was therefore registered in bad faith.
The disputed domain name has also been used in bad faith. It initially resolved to Wildcat Technologies’ website, which promotes a technology, which competes with that of the Complainant, and the redirection only ceased after the Complainant’s advisors sent a cease and desist letter to the company in January 2020. Registration of a domain name that is confusingly similar to a well-known trade mark by any entity that does not have a relationship to that mark can amount to sufficient evidence of bad faith registration and use. Furthermore, the Respondent has been using the disputed domain name in order to disrupt the business of the Complainant and has been attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Moreover, the Respondent was using a privacy service to prevent the Complainant from knowing his identity and taking direct administrative action against him. Use of a privacy proxy service to avoid being notified of a proceeding under the Policy enables an inference of bad faith to be made.
Even though the disputed domain name does not presently resolve to an active website, this does not avoid a finding of bad faith. The requirements of bad faith under the doctrine of passive holding, as set out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and at section 3.3 of the WIPO Overview 3.0, are met.
Additionally, the offering for sale of the disputed domain name at a price of several thousand United States dollars, which is clearly in excess of the costs that might be related to its registration and renewal, amounts to further evidence of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 SimilarThe Complainant has provided details of a number of the registered trade marks it owns for ROCK-EVAL, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.
As a technical requirement of registration, the gTLD, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s ROCK-EVAL mark in its entirety, with no additional elements. It is accordingly identical to the Complainant’s mark and the Panel therefore finds that the disputed domain name is identical to a trade mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods or services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Neither the previous use of the disputed domain name, to redirect to the website of a competitor company of which the Respondent is the President, nor its current use to resolve to a “coming soon” webpage comprises use in connection with a bona fide offering of goods or services. See, by way of example, Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. D2017-2392 and LeadsMarket.com LLC v. Privacy Protect, LLC (PrivacyProtect.org) / Oscar Dominguez,WIPO Case No. D2019-1363.
Paragraph 4(c)(ii) of the Policy is inapplicable, there is nothing to suggest that the Respondent has been commonly known by the disputed domain name. Paragraph 4(c)(iii) of the Policy is also inapplicable in that neither redirection of the disputed domain name to the Complainant’s competitor’s website nor non-use of the disputed domain name amounts to a legitimate noncommercial use of it. Moreover, the disputed domain name is identical to the Complainant’s ROCK-EVAL trade mark and very likely to be associated with the Complainant, which prevents its use by the Respondent from being considered fair. As explained at section 2.5.1 of the WIPO Overview 3.0: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.”
Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent; see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithAs at the date of registration of the disputed domain name in September 2011, the Complainant had been using its ROCK-EVAL mark for over 30 years and it had developed repute within the petroleum industry. The fact that the disputed domain name was registered by the President of a competitor of the Complainant points clearly to the Respondent having been aware of the Complainant’s mark as at the date of registration and to have registered it in order to take unfair advantage of the Complainant’s mark in some manner. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.
The former use of the disputed domain name to redirect to the website of a competitor falls within the circumstance of bad faith set out at paragraph 4(b)(iv) of the Policy in that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Even though Internet users would have realized, on reaching the Respondent’s website, that it was not the Complainant’s website does not negate the fact that it will have been the identity of the disputed domain name to the Complainant’s mark that will have led them to visit it; see Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC,WIPO Case No. D2016-0800 and Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491.
The current use of the disputed domain name to resolve to a “coming soon” web page does not prevent a finding of bad faith under the doctrine of passive holding. In this respect, see section 3.3 of the WIPO Overview 3.0, which explains that; “[f]rom the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The factors that are typically considered when applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealment of its identity or its use of false contact details and (iv) the implausibility of any good faith use to which the domain name may be put.
Applying these factors to the current circumstances: (i) the Complainant has established that its ROCK-EVAL trade mark is well known and long-established in the petroleum industry; (ii) the Respondent has not replied to the Complaint nor provided any evidence of actual or contemplated good faith use of the disputed domain name; (iii) the details of the underlying registrant have been protected from the public WhoIs record by a privacy service; and (iv) the Panel is unable to consider any plausible good faith use to which the disputed domain name could be put. Accordingly, the circumstances of the use of the disputed domain name support a finding of bad faith under the doctrine of passive holding.
Finally, having regard to the fact that the disputed domain name was registered by the President of a direct competitor of the Complainant and that it relates to the Complainant’s brand name for a well-known process used by it, to which the disputed domain name is identical, the Panel finds that the circumstance of bad faith registration and use set out at paragraph 4(b)(iii) of the Policy is also established, namely that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
For the above reasons, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. In the light of the above finding, the Panel finds that it is unnecessary to consider the Complainant’s additional submissions.
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
Antony Gold
Sole Panelist
Date: November 17, 2021
1 As explained at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the website to which the disputed domain name resolves to establish the use, which is presently being made of it.