ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION QatarEnergy v. QATAR ENERGY Case No. D2023-2804 1. The Parties The Complainant is QatarEnergy, Qatar, represented by Hogan Lovells (Paris) LLP, France. The Respondent is QATAR ENERGY, Nigeria. 2. The Domain Names and Registrar The disputed domain names
and are registered with Tucows Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 5, 2023. On July 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 6, 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 named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 13, 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 July 18, 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 Respondent of the Complaint, and the proceedings commenced on July 24, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2023. The Center appointed Luca Barbero as the sole panelist in this matter on August 25, 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 Qatar. Originally established as the Qatar General Petroleum Corporation, it was eventually renamed and rebranded as Qatar Petroleum in January 2001. Having operated under the name of Qatar Petroleum for over 20 years, the Complainant changed its name to "QatarEnergy" on October 11, 2021. The Complainant's rebranding was widely reported by the press. Wholly owned by the State of Qatar, the Complainant's operations are directly linked with state planning agencies, regulatory authorities and policy making bodies. The Complainant's revenues from oil and natural gas together amount to 60% of the national GDP of Qatar. As of 2018, the Complainant was the third largest oil corporation in the world by oil and gas reserves. In 2021, the Complainant was listed as the No. 2 among the "Top 10 Unlisted Companies In Qatar" by Forbes Middle East. The Complainant has developed close partnerships with international oil companies in the implementation of a large number of oil and gas projects, as well as in a growing number of exploration and production activities in regions like Latin America, Africa and the Mediterranean. In addition, the Complainant has substantial global investments in liquefied natural gas terminals, petrochemical projects and refining facilities. The Complainant has also incorporated numerous subsidiaries, joint ventures, associates and joint operations in different countries, such as Qatar, United States of America, Canada, Bahamas, Brazil, Mexico, Argentina, United Kingdom, Netherlands (the Kingdom of), Italy, Greece, Malta, Cyprus, Morocco, Mozambique, Libya, Egypt, Namibia, Cote d'Ivoire, Liberia, Congo, Oman, South Africa, Türkiye, Kingdom of Saudi Arabia, United Arab Emirates, Bahrain, Kuwait, India, Singapore and China. The Complainant is the owner, amongst others, of the following trademark registrations, as per trademark registration details submitted as annex 9 to the Complaint: - Austria trademark registration No. 316677 for QATARENERGY (figurative mark), filed on November 11, 2021 and registered on December 17, 2021, in classes 1, 4, 37 and 42; - United Kingdom trademark registration No. UK00003708704 for QATARENERGY (figurative mark), filed on October 11, 2021 and registered on January 7, 2022 in classes 1, 4, 37, 39, 40, 41, 42, 43 and 45; - European Union trademark registration No. 018573695 for QATAR ENERGY (figurative mark), filed on October 11, 2021 and registered on April 19, 2022, in classes 01, 04, 37, 39, 40, 41, 42, 43 and 45; - European Union trademark registration No. 018573702 for QATAR ENERGY (figurative mark), filed on October 11, 2021 and registered on April 19, 2022, in classes 01, 04, 37, 39, 40, 41, 42, 43 and 45; - European Union trademark registration No. 018573696 for QATAR ENERGY (figurative mark), filed on October 11, 2021 and registered on April 20, 2022, in classes 01, 04, 37, 39, 40, 41, 42, 43 and 45. The Complainant is also the owner of the domain names and , both redirected to the Complainant's official website at "www.qatarenergy.qa". The disputed domain names and were registered on February 16, 2023, and are currently not pointed to active websites. page 3 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 are confusingly similar to the trademark QATARENERGY in which the Complainant has rights as they reproduce the trademark in its entirety with the mere addition of hyphens and the terms "eoi" (acronym of "expression of interest"), "project" and "qa" (twoletter country abbreviation for Qatar) with a hyphen, followed by the generic Top-Level Domain ("gTLD") ".com". With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent cannot assert that, prior to any notice of this dispute, it was using, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services as the disputed domain names did not point to active websites at the time of filing. The Complainant also submits that the Respondent is not commonly known by the disputed domain names as it provided false contact information upon registration, which as a result of the Complainant's research, does not appear to exist in that area. The Complainant also indicates that, to the best of its knowledge, there is also no evidence of the Respondent having acquired or applied for any trademark registrations for the trademark QATARENERGY or any variation thereof. The Complainant states that the non-use of the disputed domain names in connection with active websites does not amount to a legitimate noncommercial or fair use and emphasizes that the composition of the disputed domain names, comprising the Complainant's trademark QATARENERGY together with the descriptive terms "eoi", "project" and "qa" carries a high risk of implied affiliation with the Complainant. The Complainant also asserts that it believes that the disputed domain names have been registered to conduct fraudulent activities, although it does not yet have evidence of this. The Complainant contends that the disputed domain names share various commonalities with other almost identically composed domain names recuperated by the Complainant as a result of other recent proceedings under the Policy, a circumstance which would strongly suggest that the disputed domain names were also registered in order to conduct similar fraudulent schemes. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering i) its considerable goodwill and world renown in connection with oil and gas activities; ii) its QATARENERGY mark registration date long predates the Respondent's registration of the disputed domain names; iii) the Complainant's prominent online presence and iv) the Complainant's recent rebranding to QATARENERGY in October 2021, which was widely reported by the international press, the Respondent, having no relationship with the Complainant or authorization to make use of its trademarks in a domain name or otherwise, knowingly proceeded to register the disputed domain names, in bad faith. The Complainant also states that the non-use of the disputed domain names does not prevent a finding of bad faith use under the doctrine of passive holding since i) the Respondent has not provided any evidence of actual or contemplated good faith use of the disputed domain names; ii) the Respondent's physical address in the WhoIs records is not only inaccurate or incomplete but also false and iii) that the disputed domain names carry a high risk of implied affiliation with the Complainant and iv) there is no plausible good-faith use to which the disputed domain names could be put that would not have the effect of misleading consumers as to the source or affiliation of the disputed domain names with the Complainant. page 4 B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint 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." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. 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 names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("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. With respect to trademark registrations with design elements, as stated in WIPO Overview 3.0, section 1.10, "To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show 'rights in a mark' for further assessment as to confusing similarity. However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant's trademark registration is insufficient by itself to support standing under the UDRP. [See in particular section 1.2.3.]." This is not the case here. In the case at hand, the Panel notes that the dominant portion of the Complainant's trademark, consisting of the denominative element "QatarEnergy", is entirely reproduced in the disputed domain names. While the addition of the terms "eoi" (acronym for "expression of interest"), "project" and "qa" (two-letter country abbreviation for Qatar) may bear on assessment of the second and third elements, the Panel finds the addition of such terms and of hyphens does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. page 5 B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the 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, UDRP 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 primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the 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 the 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 Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks. Moreover, there is no element from which the Panel could infer the Respondent's rights or legitimate interests over the disputed domain names, or that the Respondent might be commonly known by the disputed domain names. The registrant details for the disputed domain names identify the Respondent's name and organization as "Qatar Energy" based in Nigeria. However, as demonstrated by the Complainant, no company under the name "Qatar Energy" appears to exist with the corresponding address. The Respondent's mere inclusion of "Qatar Energy" in the WhoIs records does not in itself give rise to a legitimate claim of being commonly known by the disputed domain names. As highlighted above, the disputed domain names are currently not pointed to active websites and prior to the present proceeding were both redirected to a registrar parking page. There is no evidence showing that the disputed domain names might have been used by the Respondent, prior to receiving notice of the dispute, in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks. The Panel also finds that the disputed domain names are inherently misleading. Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. 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 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. page 6 In view of the Complainant's world renown and goodwill in connection with oil and gas activities, its prior registration and use of the trademark QATARENERGY and the fact that Complainant's rebranding to "QatarEnergy" in October 2021 was widely reported by the international press (as shown by articles submitted as annex 5 to the Complaint), the Panel finds that the Respondent was very likely aware of the Complainant's trademark rights at the time of registration of the disputed domain names, which occurred only in February 2023. According to the records, the disputed domain names were pointed to mere registrar parking pages before the filing of the Complaint. At the time of the drafting of the Decision, they are not pointed to any active webpage. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. 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 reputation of the Complainant's trademark and, in view of i) the composition of the disputed domain names, ii) the implausibility of any good-faith use to which they may be put, iii) the Respondent's failure to submit a response and provide evidence of possible good-faith use and iv) the Respondent's use of false contact details in the WhoIs records, the Panel finds that 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. 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. /Luca Barbero/ Luca Barbero Sole Panelist Date: September 11, 2023
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