ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Halliburton Energy Services, Inc. v. Privacy service provided by Withheld for Privacy ehf /Maxime Freson Case No. D2022-2261 1. The Parties 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 Privacy service provided by Withheld for Privacy ehf, Iceland / Maxime Freson, United States. 2. The Domain Name and Registrar The disputed domain name ("Domain Name") is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 21, 2022. On June 22, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 22, 2022, 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 June 24, 2022 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 June 27, 2022. The Center verified that the 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 June 30, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 1, 2022. page 2 The Center appointed John C. McElwaine as the sole panelist in this matter on August 3, 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. Factual Background Complainant is a Texas-based corporation providing products and services to the energy industry. Complainant owns the following United States trademark registrations relevant to this matter: - HALLIBURTON, U.S. Reg. No. 2,575,819 registered on June 4, 2002 in classes 37, 40 and 42; and - HALLIBURTON, U.S. Reg. No. 2,575,840 registered on June 2, 2002 in classes 1, 6, 7, 9, and 16. In addition, Complainant provided a chart of trademark registrations demonstrating registration in multiple countries worldwide of the HALLIBURTON trademark and other HALLIBURTON-formative trademarks. Collectively, these trademark registrations are referred to herein as the "HALLIBURTON Mark". Respondent registered the Domain Name on March 21, 2022. The Domain Name redirects to Complainant's website at "www.halliburton.com". 5. Parties' Contentions A. Complainant Complainant alleges it is one of the world's largest providers of products and services to the energy industry. Complainant asserts that it is a large international company with more than 40,000 employees, representing 130 nationalities, and that it has operations in approximately 70 countries. Complainant claims its annual revenues in 2019, 2020, and 2021 were USD 22.4 billion, USD 14.4 billion, and USD 15.2 billion, respectively. Complainant further asserts that it is a leader in its industry and has been the recipient of numerous industry awards and significant recognition. As a result, Complainant points out that it has spent a great deal of effort and expense in protecting its well-known and valuable HALLIBURTON Mark. Complainant alleges that Respondent is not affiliated with Complainant, licensed to use Complainant's HALLIBURTON Mark, or licensed to register or use domain names, or associated email accounts, incorporating the HALLIBURTON Mark. Complainant contends that, without its knowledge or consent, Respondent registered the Domain Name on March 21, 2022. Moreover, Complainant alleges that Respondent has used the Domain Name to target vendors of Complainant in a fraudulent email scheme in which Respondent attempts to solicit computer hardware to be sent to Respondent from a vendor of Complainant by impersonating being an employee of Complainant. With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant's well-known HALLIBURTON Mark. Complainant points out that the Domain Name begins with Complainant's HALLIBURTON Mark with only the addition of the geographic term "Houston". With respect to the second element of the Policy, Complainant alleges that by registering a domain name confusingly similar to Complainant's well-known HALLIBURTON mark, and undertaking a fraudulent scheme with its use of the Domain Name, Respondent could not be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Complainant further asserts that Respondent cannot claim to be making any legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy. Lastly, Complainant asserts that Respondent has never been commonly known by the Domain Name within the meaning of paragraph 4(c)(ii) of the Policy. page 3 With respect to the third element of the Policy, Complainant alleges that Respondent's use of the Domain Name to send an email posing as an employee of Complainant constitutes bad faith. Complainant further alleges that Respondent's redirecting of the Domain Name to Complainant's website is bad faith because it may disrupt Complainant's business. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Because of Respondent's default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2. On this point, Complainant has provided evidence that it is the owner of numerous trademark registrations for the HALLIBURTON Mark. It is well-established that the addition of other terms to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 ("Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."); Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant's HALLIBURTON Mark in its entirety. The addition of the geographic term "Houston" does not avoid a finding of confusing similarity between the Domain Name and the HALLIBURTON Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant's HALLIBURTON Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. page 4 B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs to only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: "(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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." Complainant contends there is no right or legitimate interests in registering and using a domain name for the purpose of trading upon Complainant's well-known trademark and perpetrating a fraudulent scheme to obtain computer equipment. Complainant further contends that it has not authorized Respondent to register the Domain Name, that Respondent has not demonstrated any attempt to use the Domain Name in connection with a bona fide offering of goods or services, and that Respondent is not commonly known by the Domain Name. Respondent has not denied any of Complainant's assertions and has not put forth any evidence showing that they have a right or legitimate interest in the Domain Name. The Panel observes that the Domain Name has been used to send emails in an attempt to pose as an employee of Complainant for fraudulent purposes. Moreover, the Panel finds that purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, none of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 ("Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent."); see also, CMA CGM v. Diana Smith, WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name, "such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name".) The undisputed evidence of impersonation, deception and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings, WIPO Case No. D2019-1082. Accordingly, Complainant has made a prima facie showing of Respondent's lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. page 5 C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where respondents "knew or should have known" of complainant's trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant's submissions, which were not rebutted by Respondent, Respondent must have known of Complainant's well-known HALLIBURTON Mark, when it selected to register Domain Name. In fact, it is clear that Complainant's HALLIBURTON Mark was registered for the purpose of misleading a vendor of Complainant. In light of the email scam, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name to cloak their scam and deceive recipients into believing the emails were from Complainant. The Domain Name does not appear to have been registered for any other purpose as the Domain Name simply resolves to Complainant's home page. Such activity constitutes a disruption of Complainant's business and also establishes bad faith registration. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed domain name and the complainant's mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) In addition, the use of a deceptive domain name for an email scam has previously been found by UDRP panels to be sufficient to establish that a domain name is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367. Here, Complainant provided evidence that Respondent used the Domain Name to send emails posing as an employee of Complainant with the apparent purpose of attempting to deceive a vendor of Complainant. Such activity would constitute a disruption of Complainant's business and also establishes bad faith use of a domain name. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., supra (finding bad faith based upon the similarity of the disputed domain name and the complainant's mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) The fact that the Domain Name was used to link to Complainant's website and not in connection with a competing website does not obviate a finding of bad faith. See WIPO Overview 3.0, section 3.1.4 ("Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark: . redirecting the domain name to the complainant's (or a competitor's) website.."); FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, WIPO Case No. D2018-1111 ("A respondent redirecting a domain name to the complainant's website can establish bad faith.") Moreover, in finding a domain name used for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel, WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate, WIPO Case No. D2014-1742 ("Respondent was using the disputed domain name in conjunction with [.] an email address for sending scam invitations of employment with Complainant"); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar, WIPO Case No. D2011-0128 ("although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an 'online location'"). Based upon the foregoing, the Panel finds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. page 6 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, , be transferred to Complainant. /John C McElwaine/ John C McElwaine Sole Panelist Date: August 17, 2022
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