The Complainant is Waldorf Production UK Limited, United Kingdom, represented by Addleshaw Goddard LLP, United Kingdom.
The Respondent is Boligha Samuel, Boomshake Plc, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) confirming the language of the registration agreement is English; and
(c) 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 November 15, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 16, 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 November 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 22, 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 based in the United Kingdom which engages in oil and gas exploration and production.
From January 2004 until November 29, 2019, the Complainant was known as Endeavour Energy UK Limited. It adopted its current name in November 2019 in conjunction with the acquisition of its business by the Waldorf Production group of companies.
In about March 2021, the Complainant acquired stakes in two operating oil and gas fields in the North Sea: the Catcher and Kraken fields. The acquisition involved an initial price of GBP 330 million (or USD 460 million) with further payments dependent on production and price levels. The Waldorf Production group undertook a USD 300 million senior secured bond issue to fund the acquisition.
Following the acquisition, the Complainant had interests in four producing fields and one further “development” asset. The Complainant was then associated with the production of 22,000 to 25,000 boe (barrels of oil equivalent) per day and reserves of 43 million boe. All of the oil and gas fields in which the Complainant has interests are located in the North Sea.
On October 18, 2021, the Complainant filed two applications to register trademarks in the United Kingdom: Application Nos UK00003711345 (WALDORF PRODUCTION) and UK00003711357 (WALDORF PRODUCTION logo). Each of these applications is in respect of services in International Classes 37, 40 and 42 relavent to oil and gas exploration and services. At this stage, neither has been registered.
The Respondent registered the disputed domain name on October 8, 2020.
Until shortly before the Complaint was filed, the disputed domain name resolved to a website depicting offshore drilling rigs, the WALDORF PRODUCTION logo the subject of the Trademark Application No. UK00003711357 and text and images related to the oil fields in which the Complainant has interests. According to the Complainant, much of the text has been copied from the Complainant’s website.
In the course of October 2021, the Complainant was contacted by at least two individuals working in the offshore oil and gas industry who had received offers of lucrative employment with the Complainant purportedly from an employee of the Complainant apparently using an email address for “recruiting” at “[…]@waldorfnorthsea.com”. The employee of the Complainant is not involved in recruitment and the Complainant was not involved in these offers for jobs which the Complainant says do not exist.
5. Discussion and FindingsNo response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. The courier confirmed delivery of the Written Notice to the physical address confirmed by the Registrar. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has two pending trademark applications for (1) WALDORF PRODUCTION and (2) a logo form of that trademark. Pending trademark applications, however, do not qualify as trademark rights for the purposes of the Policy. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.1.4.
As indicated in section 4 above, the Complainant does have use of WALDORF PRODUCTION in connection with significant operations in the oil and gas field, particularly in the North Sea. While the Complainant has apparently been using the name WALDORF PRODUCTION and the associated logo since 2019 only, nonetheless oil and gas exploration and production operations of the kind the Complainant is involved with are substantial undertakings. Moreover, the website to which the disputed domain name resolved until the Complaint was filed clearly targeted the Complainant’s name and logo. It may be inferred therefore that the Respondent expected people in the industry to recognise the name and logo as identifying a specific trade source.
In these circumstances, the Panel finds that the Complainant has sufficiently demonstrated rights in the name WALDORF PRODUCTION, and also the logo form, as a trademark albeit unregistered.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of "likelihood of confusion" under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, both the Complainant’s verbal trademark and the disputed domain name share in common the name “Waldorf”. This is the primary identifier of trade source in the Complainant’s trademark, which is also reproduced in the disputed domain name. The inclusion of the geographic term “North Sea” in the disputed domain name does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8. Furthermore, the North Sea is a well-known location for oil and gas fields and also appears to be the primary location of the Complainant’s own operations. Moreover, reference to the content of the website to which the disputed domain name resolved before the Complaint was filed indicates that the Respondent was targeting the Complainant’s unregistered trademark rights. Both these factors reinforce a finding of confusing similarity. See WIPO Overview 3.0, section 1.15.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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, even if [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the evidential burden of production will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Before the Complaint was filed, the disputed domain name appeared to be used in connection with the operation of a commercial oil and gas exploration and production business. That does not qualify as a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii).
Moreover, as that use started only after the Complainant adopted and began using its name and trademarks and appears at the very least to be passing the operator of the website off as and for the Complainant, that use also does not qualify as a good faith offering of goods or services for the purposes of paragraph 4(c)(i). The content of the website alone is sufficient to reject this claim. The use of the disputed domain name in connection with fake recruitment offers reinforces that rejection. See e.g. WIPO Overview 3.0, section 2.13.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the content of the website to which the disputed domain name resolved before the Complaint was filed and the use of the disputed domain name in connection with fake recruitment offers using the name of one of the Complainant’s employees leaves little (if any) room for doubt that the Respondent was well aware of the Complainant and its trademark when the Respondent registered the disputed domain name.
Moreover, having regard to the timeframes involved, the Panel readily infers that the Respondent registered the disputed domain name for the purposes to which it has been put.
The reasons leading to the finding that the Respondent does not have rights or legitimate interests in the disputed domain name, therefore, also lead to the finding that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
6. 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,
Warwick A. Rothnie
Sole Panelist
Date: January 4, 2022