Complainant is Alaska Oil and Gas Association, United States of America (“United States”), represented by Stoel Rives, LLP, United States.
Respondent is Obada Alzatari, Israel, represented by Cylaw Solutions, India.
2. The Domain Name and RegistrarThe disputed domain name (“Domain Name”)
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2021. On October 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 9, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 13, 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 Respondent of the Complaint, and the proceedings commenced on November 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. Respondent requested an extension for filing the Response, which was granted by the Center. The Response was filed with the Center on December 18, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on January 24, 2022. 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. Procedural matter – Supplemental filingsThe Complaint was filed on October 29, 2021 and Complainant filed on January 12, 2022 a Supplemental Filing, rebutting Respondent’s response. On January 24, 2022, Respondent filed a “second response” rebutting Complainant’s supplemental filings.
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the UDRP panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the UDRP panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”, section 4.6).
The Panel notes that Respondent objected to the admission of Complainant’s supplemental filing and in the alternative submitted its own supplemental filing. The Panel notes that Complainant’s supplemental filing addresses Respondent’s arguments submitted in the Response, some of which arguably could not have been anticipated by Complainant at the time of the submission of its Complaint. In this case, after consideration of Complainant’s supplemental submissions the Panel has decided to accept them for the sake of completeness, also noting that to some extent they do not address topics that Complainant could have addressed in its Complaint, and considering the matters raised in the Response (Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner,WIPO Case No. D2001-1447; AutoNation Holding Corp. v. Rabea Alawneh,WIPO Case No. D2002-0058; and Avaya Inc. v. Ali Parsa / Ali Parsa, AVAYeRASA / Ali Parsa Koosha,WIPO Case No. D2018-1472). As regards Respondent’s supplemental filing, this was rebutting Complainant’s supplemental filings and therefore the Panel accepts it, in order to provide a fair opportunity to Respondent to respond to Complainant’s arguments.
5. Factual BackgroundComplainant, Alaska Oil and Gas Association, was founded in 1966. It is a professional trade association, active in the fostering of the viability of the oil and gas industry for the benefit of Alaskans and advocating on issues that impact this industry, providing also information services on the exploration, production, transport, and refining of petroleum and natural gas in Alaska, including through publications, opinion pieces, press releases, presentations, reports, conferences and lobbying. Complainant’ s members, per Complainant, include companies representing the majority of exploration, production, refining, and transportation of oil and gas across Alaska. Per Complaint, Complainant has been using in relation to itself and its services the acronym AOGA and a respective AOGA logo. Complainant maintains its main website at “www.aoga.org” where the AOGA logo is featuring and used to also operate its website under the Domain Name at “www.aoga.com”, where the AOGA logo was similarly featuring.
Complainant registered and used to own the Domain Name. Complainant lost control of the Domain Name via a fraudulent unauthorized transfer in 2020. In the context of Complainant’s investigation, Complainant contacted the registrar where the Domain Name had been registered, Network Solutions and the Registrar, where the account had been transferred. Complainant was informed by Network Solutions that third parties had contacted that registrar and ordered a transfer, which per Complainant was not authorised. Complainant further learned that its account with Network Solutions had been accessed several times by different people in different parts of the world. Unknown to Complainant and without authorization, one or more persons infiltrated Complainant’s domain management account and transferred the Disputed Domain to another.
Per Complaint, on or before June 5, 2020, the Domain Name had been transferred without authorization from Complainant’s registrar (Network Solutions) to the Public Domain Registry, but at that time still pointed to Complainant’s website because the nameservers were unchanged. On or before November 6, 2020, the Domain Name was transferred to yet another registrar, 1API.net but still directed to Complainant’s website. By December 22, 2020, the Domain Name was transferred again, this time to Network Solutions, but no longer pointed to Complainant’s website because the nameservers had been changed. By January 2, 2021, the registrar had been changed to Godaddy, where the Domain Name has remained.
Respondent acquired the Domain Name through an auction in December 2020. Respondent received a notification from the Registrar on February 11, 2021, that Network Solutions had sent them a notification that the transfer to the Registrar was unauthorized and that an investigation was pending. The Registrar locked the Domain Name and raised a dispute stating the transfer from Network Solutions was unauthorised. Respondent provided the required information to the Registrar and the Domain Name was unlocked.
Complainant claims that through continuous use in commerce, it has accrued rights in the AOGA mark as an indicator of Complainant and its services, under the Alaska Consumer Protection Act, codified as AS 45.50.471 - AS 45.50.561, as well as the United States federal Lanham Act (15 U.S.C. § 1125(a)).
Complainant provided screenshots of as early as October 13, 2007 and up to July 6, 2016 and also from 2017 to 2019 of its website at “www.aoga.com”, where the AOGA logo appeared prominently, as well as screenshots from 2015 to 2021 of its current website at “www.aoga.org” where the AOGA logo also features. Complainant provided further samples of use of the AOGA acronym and logo since 1979 in professional correspondence and corporate documents.
The Domain Name was registered on June 1, 1998 by Complainant. It was acquired by Respondent through an auction in December 2020 for the amount of USD 1,193. On at least August 27, 2021, the Domain Name redirected to a “domain for sale” landing page run by the Registrar, offering the Domain Name for sale for USD 88,000.01. Currently it redirects to a Registrar webpage stating “this domain may be for sale […] want to find out if this domain name is for sale? Give us a call”.
6. Parties’ Contentions A. ComplainantComplainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for the transfer of the Domain Name.
B. RespondentRespondent is a pharmacist, engaged also in domain name investments. Respondent disputes the acquisition of unregistered rights by Complainant. He further states that in any case he acquired the Domain Name in good faith in an auction. Per Respondent, he followed basic due diligence for the acquisition of the Domain Name. Namely: a) he entered the keyword “aoga” at “https://translate.google.com”, to discover that it is a term in Samoan language to mean ‘Useful’ and “not just a simple acronym”. Later Respondent also discovered that it is a synonym for Education / School as well in the same language; and b) he performed a trademark search at “Trademarkia.com”, which showed that no one owned a trademark for “aoga” in December 2020. Per Response, Respondent registered the Domain Name solely because it was a pronounceable short domain name, with a “generic meaning”, with no trademarks and without any awareness of Complainant and its acronym. Respondent acknowledges that it offered the Domain Name for sale and that this was against a “5 figures” amount, while he provides a justification for the price. The justification is that 4 letter domain names “can easily fetch 5 figures for sale to an end user”. Respondent states that he purchased the same Domain Name for a much lower amount, USD 1,193.
Per Respondent, “aoga” is also commonly used in Samoan to refer to ‘Education’ or ‘School’. Respondent further argues that “aoga” is the last name for individuals around the world, in different countries and a Geographical Place in Japanese: Aoga-Shima (‘Shima’ is Island in Japanese).
Respondent does not dispute that Complainant used the acronym “AOGA” in the form of a stylised logo.
Respondent does not affirm or deny the fact that there had been an unauthorized transfer of the Domain Name. Respondent states that he was not aware at the time of purchase of the Domain Name of it “being stolen or expired” and states also that “no one has ever communicated anything specifically as to the reasons, when the domain name got locked”. Respondent provides Registrar communication to him mentioning an unauthorised transfer investigated by Network Solutions. After submission of documents, Respondent got an answer as to the unlocking of the Domain Name by the Registrar and the communication ended.
7. Discussion and FindingsParagraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent 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.
A. Identical or Confusingly SimilarThe term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered marks. It is also well accepted that the first element functions primarily as a standing requirement (WIPO Overview 3.0, section 1.7). The Panel notes that AOGA is not only an acronym of Complainant’s name, but that Complainant has demonstrated under the Policy unregistered rights through use of the AOGA mark as a distinctive identifier of Complainant’s services (including for example the publication of information, and research of the oil & gas industry, as well as the provision of services to its members). The nature of Complainant as an “association” does not render use of AOGA in the context of its business as non commercial, or unworthy of a protectable right in AOGA under the Policy, contrary to Respondent’s contentions. The Panel considers that Complainant has sufficiently demonstrated use of the AOGA mark to qualify as unregistered mark for the purposes of the Policy.
The Domain Name incorporates Complainant’s AOGA mark in its entirety. This is sufficient to establish the first element of the Policy (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is identical to the AOGA mark.
Complainant has established paragraph 4(a)(i) of the Policy
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to Respondent of the dispute, 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) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) 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.
The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.
As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name resolved to a page, where it was being offered for sale for USD 88,000.01, an amount much higher than its acquisition price by Respondent of USD 1,193.
Respondent argues that he has rights or legitimate interest because the Domain Name is a dictionary term. However, Respondent presents only a meaning of this word in the language of Samoa and in Japan. Merely registering a domain name comprised of a dictionary word does not by itself automatically confer rights or legitimate interests on the respondent (WIPO Overview 3.0, section 2.10). In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights (WIPO Overview 3.0, section 2.10). Respondent does not prove that he used or intended to use the Domain Name in accordance with such Samoan dictionary or Japanese geographical meaning. Similarly the argument that AOGA is a surname of people around the world does not give rise to rights or legitimate interests to Respondent who has a different surname.
Respondent further provides a list of his domain name registrations. There is nothing wrong per se in owning a portfolio of domain names provided that the circumstances do not indicate illegitimate conduct or bad faith. However, the Panel also considers that owning a portfolio of domain names would not by itself give rise to rights or legitimate interests in a disputed domain name, particularly if the latter was registered to take advantage of the mark of another. (WIPO Overview 3.0, section 2.10). Then, it seems relevant to consider whether, on the balance of probabilities, Respondent registered and used the Domain Name with a likely knowledge of Complainant’s use of the mark AOGA, registering it due to its identity. The Panel incorporates here its discussion from the next section concerning Respondent’s registration and use of the Domain Name in bad faith.
The Panel finds that Complainant has established a prima facie case under this element of the Policy, and the circumstances of this case do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that is more likely than not that Respondent has registered and used the Domain Name in bad faith. Because the AOGA mark had been used at the time of the Domain Name registration by Respondent, noting the composition of the Domain Name, the fact that a WhoIs search would have shown that the Domain Name was created in 1998, and that the Domain Name was being used previously by Complainant, the Panel finds that Respondent knew of Complainant’s mark when registering the Domain Name, and probably registered it due to its identity to the AOGA mark used by Complainant.
While the Complainant did not own a registered trademark at the time Respondent acquired the Domain Name, Panel finds it likely that Respondent should have known about Complainant, as such knowledge is readily obtainable through a simple browser search and also due to Complainants’ nature of business, provided also online through online publications and press releases (see Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462).
Respondent’s allegation that he was not aware of Complainant based in Alaska and the AOGA mark because he is based in Israel are not convincing in view of the online presence of Complainant demonstrated mainly through its website at “www.aoga.org”.
The Panel notes that Respondent claims to be a domain name investor and provides a list of domain names in his portfolio (including other domain names acquired in auctions). While it may be that Respondent is also interested in the acquisition of short domain names, that is not sufficient to establish in the circumstances of this case that Respondent acquired the Domain Name only due to it corresponding to a short domain name. The Panel notes that the circumstances of this case point towards a likely knowledge of Complainant, in view inter alia of Complainant’s Internet presence and the fact that the Domain Name was initially registered in its own name.
Respondent claimed to have followed “basic due diligence at the time of acquisition of the domain name”. The Panel further notes that as part of this due diligence, Respondent asserts that he used “translate.google.com” to discover the meaning of the word in the Samoan language, and that he performed a trademark online search which showed no result for AOGA.
Respondent provides in his Response some Internet research showing the use of “Aoga” as a surname in different countries of the world and as a geographical place in Japanese and yet he claims that he never came across and was unaware of Complainant and the use of AOGA by Complainant despite the latter’s online presence, e.g. in Complainant’s website at “www.aoga.org”. The Panel notes Respondent’s contention of performing a “basic due diligence”, but finds it very unlikely that Respondent would not have made a customary Internet search of the term “aoga” (which would have likely shown Complainant’s online presence). In this regard, Complainant provided a Google search of “aoga” showing Complainant’s information in the top results. Even if Complainant’s search is dated 2022, the Panel notes Complainant’s longstanding use of AOGA, and noting Respondent’s acquisition of the Domain Name took place in 2020, the Panel is ready to infer that a similar search at the time of the acquisition would have shown some information about Complainant. Respondent states that he did not research the Internet because AOGA is a common word, and that such an Internet search is not obligatory. However, the Panel finds it difficult to believe that Respondent would have used “translate.google.com”, searched online for registered trademarks consisting of “aoga”, and would not have done or thought of doing a simple Internet search (through a search engine) for the term “aoga”. Furthermore, Complainant was the one that had registered and owned the Domain Name, while operating its main website under it and under an identical domain name at “www.aoga.org”. The Panel also notes that Respondent acquired the Domain Name individually in an auction. The Panel finds that is more likely than not that a “domain name investor” would have reasonably researched matters such as the origin of the Domain Name (in order to check the creation date of the Domain Name, and/or if it has been previously used), particularly noting that Respondent was acquiring a single domain name. A WhoIs search for the Domain Name would have shown that it was created in 1998, and the Panel finds it reasonable to assume that a person interested in acquiring such an old domain name would have questioned himself what is the story behind it, and how has it been used in the past. A reply to such questions would have been easily answered through simple Internet searches, historical WhoIs searches, or visiting the Web Archive to see the previous use of the Domain Name. The Panel notes that Respondent in his supplemental filing claims that the Domain Name “has been in use for limited period of time”. The Panel takes note of the evidence submitted by Complainant namely screenshots of as early as October 13, 2007 and up to July 6, 2016 and also from 2017 to 2019 of its website at “www.aoga.com”, where the AOGA logo appeared prominently, as well as screenshots from 2015 to 2021 of its current website at “www.aoga.org”. As part of the general powers of the Panel, the Panel has visited the Web Archive, and notes that a search of the Domain Name shows 67 captures from 2000 to 2021. The Panel has visited several of the captures, and notes that the first capture shows Complainant’s use in 2000, and while there are limited points in time that do not show an active use of the Domain Name, the Panel notes that Complainant was using it in 2019 namely for several years.
In addition, Complainant has demonstrated that the Domain Name was being offered for sale for an amount that significantly exceeded the acquisition price paid by Respondent. This, in view of the circumstances of the case, where the Panel finds it probable that Respondent knew of Complainant’s previous ownership of the Domain Name and use of AOGA (and of its logic interest in the Domain Name), the Panel finds that the offer for sale for an amount substantively over the out-of-pocket costs constitutes further evidence of bad faith (Aygaz Anonim Şirketi v. Arthur Cain,WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy, paragraph 4(a)(iii).
The Panel also considered Respondent’s request of Reverse Domain Name Hijacking (RDNH) which is defined in paragraph 1 of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. The basis for such a finding would have been that, on the evidence filed, Complainant should have known that the Complaint did not have any chance of success. The Panel notes the following: under section 4.16 of the WIPO Overview 3.0 reasons for finding RDNH include: “(i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith, such as registration of the disputed domain name well before the complainant acquired trademark rights, (ii) facts which demonstrate that the complainant clearly ought to have known it could not succeed under any fair interpretation of facts reasonably available prior to the filing of the complaint, including relevant facts on the website at the disputed domain name or readily available public sources such as the WhoIs database”. In view of the Panel’s conclusions regarding the registration and use of the Domain Name in bad faith, and noting the circumstances of this case, the Panel is not persuaded that the Complaint was filed in bad faith.
8. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Marina Perraki
Sole Panelist
Date: February 7, 2022