ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION QatarEnergy v. Muhamamd Umair Case No. D2023-3139 1. The Parties The Complainant is QatarEnergy, Qatar, represented by Hogan Lovells (Paris) LLP, France. The Respondent is Muhamamd Umair, Pakistan. 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 July 20, 2023. On July 21, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 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 July 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2023. The Center appointed Luca Barbero as the sole panelist in this matter on August 23, 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 the 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, 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 8 to the Complaint: - Austrian 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 name was registered on January 14, 2023 and is not pointed to an active website. page 3 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to its trademark QATARENERGY as it reproduces the textual element of its trademark in its entirety with the mere addition of the geographical abbreviation "qa" for Qatar, hyphens and the generic Top-Level Domain ".com". With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has not received any license or other authorization of any kind to make use of the Complainant's trademark in a domain name or otherwise. The Complainant also asserts that the Respondent is not commonly known by the disputed domain name and that there is no evidence that the Respondent may have used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name does not resolve to an active website. The Complainant also suspects that the disputed domain name was registered to conduct fraudulent activities. In addition, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that the disputed domain name, comprising the Complainant's trademark QATARENERGY together with the geographical abbreviation "qa", carries a high risk of implied affiliation with the Complainant as it is highly similar to the domain name through which the Complainant operates its main consumer-facing website. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its considerable world renown and goodwill in connection with oil and gas activities, its trademark rights predating the Respondent's registration of the disputed domain name and the fact that the Complainant's rebranding to "QatarEnergy" in October 2021 was widely reported by the international press, the Respondent could not credibly argue that it did not have prior knowledge of the Complainant's trademark at the time of registration of the disputed domain name. The Complainant therefore asserts that the Respondent, 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 name, which carries with it a high risk of implied affiliation with the Complainant, in bad faith. The Complainant also states that the non-use of the disputed domain name does not prevent a finding of bad faith use under the doctrine of passive holding since i) the Complainant is well known internationally and its recent rebranding to "QatarEnergy" in October 2021 was widely reported by the international press; ii) despite the Complainant's efforts to contact the Respondent, the Respondent has not come forward with any response to the Complainant's communications or evidence of any bona fide intent in relation to the disputed domain name; and iii) in light of the composition of the disputed domain name itself, it carries a high risk of implied affiliation with the Complainant, as it is highly similar to the domain name used for the Complainant's official website. As such, the Complainant cannot exclude the possibility that the disputed domain name may be used for hyperlinks or emails in connection with fraudulent schemes targeting the Complainant's users. The Complainant concludes that there is no plausible good-faith use to which the disputed domain name could be put that would not have the effect of misleading consumers as to the source or affiliation of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. page 4 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 name registered by the Respondent is 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 name; and (iii) that the disputed domain name has been registered and is 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 name. 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 name. While the addition of a geographical indicator "qa" may bear on assessment of the second and third elements, the Panel finds the addition of such term and of hyphens does not prevent a finding of confusing similarity between the disputed domain name 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. 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 page 5 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 name. 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 name 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 trademark. Moreover, there is no element from which the Panel could infer the Respondent's rights or legitimate interests over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name. The disputed domain name currently does not resolve to an active website and there is no evidence showing that the disputed domain name 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 name is 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. 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 - including online via the Complainant's website at "www.qatarenergy.qa" - and the fact that the 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 name, which occurred only in January 2023. The disputed domain name is not pointed to an active website. 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 name 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 page 6 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 the composition of the disputed domain name, the implausibility of any good-faith use to which it may be put and the Respondent's failure to submit a response and provide evidence of possible good-faith use, the Panel finds that the passive holding of the disputed domain name 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 name be transferred to the Complainant. /Luca Barbero/ Luca Barbero Sole Panelist Date: September 7, 2023
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