ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION QatarEnergy v. Sam Johan and Alex Kanarer Case No. D2023-2712 1. The Parties The Complainant is QatarEnergy, Qatar, represented by Hogan Lovells (Paris) LLP, France. The First Respondent is Sam Johan, Australia, and the Second Respondent is Alex Kanarer, United Kingdom. 2. The Domain Name and Registrar The disputed domain names and are registered with OwnRegistrar, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 23, 2023. On June 26, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 26, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the second named Respondent (WhoisSecure) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 27, 2023, 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 June 30, 2023. 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 Respondents of the Complaint, and the proceedings commenced on July 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2023. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 7, 2023. The Center appointed Zoltán Takács as the sole panelist in this matter on August 24, 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 is a Qatari state-owned corporation founded in 1974, which operates all oil and gas activities in the State of Qatar. Having operated under the name of Qatar Petroleum for over 20 years, the Complainant changed its name to QatarEnergy in October 2021, which rebranding was widely reported by the press. In addition to being one of the largest oil corporations in the world by oil and gas reserves the Complainant has incorporated numerous subsidiaries, joint ventures, associates, and joint operations in over 30 countries worldwide. The Complainant is among others owner of the European Union Trademark Registration No. 018573702 for the figurative mark QATARENERGY, registered since April 19, 2022, for variety of goods and services related to oil and gas field. The Complainant owns the domain name , which was registered on October 28, 2021, and resolves to its corporate website. The Complainant has made substantial investments to develop a strong presence online by being active on various social media forums. For example, the Complainant has over 59,000 followers on Twitter and its official page on Facebook has over 476.000 "likes". The First Respondent registered the disputed domain name on November 25, 2022. The Second Respondent registered the disputed domain name on November 29, 2022. The disputed domain names appear not to have resolved to active websites. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of the disputed domain names. Notably, the Complainant contends that: - the disputed domain names, which incorporate the verbal elements of its trademark with addition of the descriptive terms "bond" and "bonds" are confusingly similar to it; - the Respondents have no rights or legitimate interests in respect of the disputed domain names; - the Respondents, having no relationship with the Complainant or authorization to make use of its trademark in a domain name or otherwise knowingly proceeded to register the disputed domain names; - despite the fact that the disputed domain names have not resolved to active websites there is no plausible good-faith use to which the disputed domain names could be put. The Complainant requests that the disputed domain names be transferred from the Respondents to the Complainant. page 3 B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Preliminary Matter - Multiple Domain Names and Respondents The Complaint was filed regarding two domain names and two domain name holders and the Complainant requested consolidation of its claims. Under paragraph 3(c) of the Rules "the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder". Under paragraph 10(e) of the Rules, UDRP panels have the authority to consolidate multiple domain name disputes involving differently named domain name holders. According to section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), "where a complaint is filed against multiple respondents, panel look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties". The following evidence submitted by the Complainant in support of its request for consolidation suggests that there is a common person or entity holding interests in the disputed domain names and that it is therefore just to hear them in a single administrative proceeding without unfairly favoring any party: - the disputed domain names were registered under the ".com" generic Top-Level Domain (gTLD) and include the Complainant's trademark with the addition of the term "bond" in its singular and plural form; - the disputed domain names were registered using the same Registrar and reseller and are hosted on the same name servers; - the disputed domain names were registered only four days apart and have not resolved to active websites; - the disputed domain names were previously hosted on the same IP address. The Panel therefore allows the consolidation as requested by the Complainant and also notes that neither Respondent has objected to the consolidation. Paragraph 10(e) of the Rules and WIPO Overview 3.0, section 4.11.2. 6.2 Substantive Matters - Three Elements Paragraph 15(a) of the Rules requires that the Panel's decision be made "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that: (i) the 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. page 4 A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1 The design element in the Complainant's trademark does not convey any relevant information under the first element of the Policy; it is the textual element QATARENERGY that is the dominant feature of the trademark, which the disputed domain names fully incorporate. WIPO Overview 3.0, section 1.10. The Respondents' addition of the terms "bond" and "bonds" to the Complainant's trademark in the disputed domain names does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. The applicable gTLD in the disputed domain names (in this case ".com") is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. WIPO Overview 3.0, section 1.11.1. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which a Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of a respondent. As such, where a complainant makes out a prima facie case that a respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names. The Respondents have not rebutted the Complainant's prima facie showing and have not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names. The Panel considers that the record of this case reflects that: - before any notice to the Respondents of the dispute, the Respondents did not use, nor have they made demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy, and WIPO Overview 3.0, section 2.2; - the Respondents (as an individual, business, or other organization) have not been commonly known by the disputed domain names. Paragraph 4(c)(ii) of the Policy, and WIPO Overview 3.0, section 2.3; page 5 - the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Paragraph 4(c)(iii) of the Policy, and WIPO Overview 3.0, section 2.4; - the record contains no other factors demonstrating rights or legitimate interests of the Respondents in the disputed domain names; - the composition of the disputed domain names - comprising the Complainant's trademark together with the terms "bond" and "bonds" carries a risk of implied affiliation with the Complainant, particularly as a corporation issuing bonds. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondents chose not to respond to the Complaint and the Complainant's contentions and provide any explanation why they registered domain names confusingly similar to the Complainant's trademark. In view of the Panel, the only logical rationale for the Respondents' replication of the Complainant's trademark in the disputed domain names was to target the Complainant. WIPO Overview 3.0, section 3.2.1. As mentioned above, there is no evidence that the disputed domain names have resolved to active websites. Panels 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. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in 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 concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant's trademark, the composition of the disputed domain names as mentioned above, as well as that any good faith use to which the disputed domain names may be put appears to be implausible. Accordingly, the Panel finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy. Based on the available record, the Panel finds the third element of the Policy has been established. 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 disputed domain names and be transferred to the Complainant. /Zoltán Takács/ Zoltán Takács Sole Panelist Date: September 7, 2023
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