ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Subsea 7 Limited v. Alex Jones Case No. D2023-2482 1. The Parties The Complainant is Subsea 7 Limited, United Kingdom ("UK"), represented by Keltie LLP, UK. The Respondent is Alex Jones, United States of America ("United States"). 2. The Domain Name and Registrar The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2023. On June 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2023, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on June 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 3, 2023. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on July 6, 2023. 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. page 2 4. Factual Background The Complainant, a global leader in the delivery of offshore projects and services for the energy industry, is a UK company, which owns several trademarks with the term "subsea 7", for example: - UK Trade Mark Registration No. UK00002304950 for SUBSEA 7 (Series of 6), covering "Pipe laying machines and apparatus; robotic machines and robotic tooling systems; controls therefor, and parts and fittings for all the aforesaid goods" in Class 7, "Diving and underwater engineering services; diving and underwater engineering services for the inspection, construction, maintenance and repair of offshore drilling rigs, platforms, underwater pipelines and other offshore apparatus" in Class 37, "Rental and leasing of ships; rental and leasing of pipe laying ships" in Class 39 and "Engineering consultancy services" in Class 42, registered on April 21, 2006; - European Union ("EU") Trade Mark Registration No. 011426335 for SUBSEA 7, covering "Pipe laying machines and apparatus; robotic machines and robotic tooling systems; controls therefor, and parts and fittings for all the aforesaid goods" in Class 7, "Diving and underwater engineering services; diving and underwater engineering services for the inspection, construction, maintenance and repair of offshore drilling rigs, platforms, underwater pipelines and other offshore apparatus" in Class 37, "Rental and leasing of ships; rental and leasing of pipe laying ships" in Class 39 and "Engineering consultancy services" in Class 42, registered on May 13, 2013; - International Registration No. 1147789 for SUBSEA 7 (registered on December 14, 2012), covering the same goods and services as above and designating registered protection in Australia, Norway, New Zealand, Singapore, Switzerland, and the United States; - EU Trade Mark Registration No. 011426426 for SUBSEA 7 logo, covering "Pipe laying machines and apparatus; robotic machines and robotic tooling systems; controls therefor, and parts and fittings for all the aforesaid goods" in Class 7, "Diving and underwater engineering services; diving and underwater engineering services for the inspection, construction, maintenance and repair of offshore drilling rigs, platforms, underwater pipelines and other offshore apparatus" in Class 37, "Rental and leasing of ships; rental and leasing of pipe laying ships" in Class 39 and "Engineering consultancy services" in Class 42, registered on May 13, 2013; - International Registration No. 1147588 for SUBSEA 7 logo (registered on December 14, 2012), covering the same goods and services as above and designating registered protection in Australia, Norway, New Zealand, Singapore, Switzerland, and the United States; - Canadian Trade Mark Registration No. TMA890571 for SUBSEA 7, covering "Pipe laying machines and apparatus; robotic machines and robotic tooling systems; controls therefor, and parts and fittings for all the aforesaid goods" in Class 7, "Diving and underwater engineering services; diving and underwater engineering services for the inspection, construction, maintenance and repair of offshore drilling rigs, platforms, underwater pipelines and other offshore apparatus" in Class 37, "Rental and leasing 7 of ships; rental and leasing of pipe laying ships" in Class 39 and "Engineering consultancy services" in Class 42 and registered on November 21, 2014. The disputed domain name was registered on July 3, 2022, and resolves to an inactive webpage. 5. Parties' Contentions A. Complainant The Complainant contends that the extension "ltd", present in the disputed domain name should be ignored in accordance with prior UDRP decisions. page 3 The Complainant argues that the trademark SUBSEA 7 appears in its entirety in the disputed domain name. As a result, the disputed domain name is to be considered identical to the Complainant's trademark. The disputed domain name resolves to an inactive webpage and therefore, there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it is only matter of time before the disputed domain name is used in connection with a commercial offering. That being the case, the Complainant struggles to think of any use of the disputed domain name that would not take unfair advantage of the Complainant's rights for commercial gain; the Complainant's reputation in its global portfolio of SUBSEA 7 trademarks is such that Internet users would inevitably view the disputed domain name and mistakenly associate its content with the Complainant's prior trademark. Moreover, the Complainant stresses that the Respondent is not commonly known by the name "subsea 7". According to the Complainant, it has prior rights over the trademark SUBSEA 7, and has not authorized the registration and use of the disputed domain name, nor the use of its trade name and trademarks by the Respondent. The Respondent is not affiliated to or authorized by the Complainant to use or register the disputed domain name. The Complainant's intellectual property rights for SUBSEA 7 predate the registration of the disputed domain name. The Complainant also argues that the Respondent was aware of the Complainant's rights and has clearly registered the disputed domain name to target the Complainant's brand, and that the registration of the disputed domain name was therefore conducted in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Based on the evidence and arguments submitted, the Panel's findings are as follows: page 4 A. Identical or Confusingly Similar The evidence demonstrates that the Complainant is the owner of several trademark registrations for SUBSEA 7 in many jurisdictions. The disputed domain name incorporates the Complainant's trademark SUBSEA 7 in its entirety, with the addition of "ltd". The addition of this term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark, since SUBSEA 7 remains recognizable in the disputed domain name. As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant's mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant's trademark SUBSEA 7. B. Rights or Legitimate Interests The Respondent has not submitted a response to the Complaint. There is no evidence that the Respondent has any authorization to use the Complainant's trademarks or to register domain names containing the Complainant's trademark SUBSEA 7. There is no evidence that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name 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. The nature of the disputed domain name itself is such to carry a risk of implied affiliation that cannot constitute fair use, with the addition of a term related to the Complainant's activities "ltd.". See section 2.5.1 of the WIPO Overview 3.0. The Panel finds that the non-use of the disputed domain name, which incorporates the Complainant's trademark SUBSEA 7 in its entirety, combined with an additional related term, does not correspond to a bona fide use of the disputed domain name under the Policy. For the above reasons, the Panel finds that the Complainant has made out an unrebutted prima facie case and the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The trademark SUBSEA 7 is registered by the Complainant in several jurisdictions and has been used for years. The Complainant's trademarks predate the registration of the disputed domain name. The Complainant's trademark is distinctive and has a strong worldwide and online visibility. The disputed domain name reproduces the Complainant's trademark SUBSEA 7, and the Respondent has no rights or legitimate interests in the disputed domain name. page 5 The Complainant demonstrates that there is no other reason for the use and registration of the disputed domain name but to take advantage of the reputation of the Complainant's trademark, with the intent to deceive Internet users into believing that the disputed domain name is associated with the Complainant. The Respondent obviously was aware of the Complainant's mark when registered the disputed domain name, since the Respondent chose the generic abbreviation "ltd" to associate with the trademark SUBSEA 7, in a clear attempt to cause confusion and undue association. Moreover, the Respondent has chosen not to respond to the Complainant's allegations. According to the panel's decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610, supra "the failure of the Respondent to respond to the Complaint further supports an inference of bad faith" (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). In addition, as a result of a Registrar takedown request filed by the Complainant, the disputed domain name was suspended by the Registrar, on the grounds of being an abusive registration. While it appears that the disputed domain name has never been used in connection with an active website, given the totality of the circumstances present here, the passive holding of the disputed domain name does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0. Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant's trademark by misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant. For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied. 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 disputed domain name be transferred to the Complainant. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: July 20, 2023
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