ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Halliburton Energy Services, Inc. v. Michael Black Case No. D2023-5167 1. The Parties The Complainant is Halliburton Energy Services, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States. The Respondent is Michael Black, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2023. On December 13, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 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 amendment to the Complaint on January 3, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2024.
page 2 The Center appointed Ezgi Baklacı Gülkokar as the sole panelist in this matter on February 13, 2024. 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 The Complainant is established in 1919 and one of the world’s largest providers of products and services to the energy industry. The Complainant has more than 40,000 employees, representing 130 nationalities and operations in approximately 70 countries. From the provided evidence Annex 6, revenues in 2022 was USD 20.2 billion. It owns the trademarks for HALLIBURTON in the United States under the registration numbers 2575819 registered on June 4, 2002, for the classes 37, 40, 42 and 2575840 registered again on June 4, 2002 for the classes 1, 6, 7, 9, 16 as evidenced with Annex 4. The Complainant also owns more than 370 trademarks bearing the term HALLIBURTON in over 60 countries as evidenced by the list within Annex 5. Its official website is operated at the domain name . The disputed domain name was registered on November 9, 2023. The website provided under the disputed domain name is not accessible on the date of the decision. The Respondent in this matter was initially masked by a privacy service but then revealed by the Registrar to be Michael Black, based in the United States. 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 Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is satisfied in the present case, as follows: Identical or confusingly similar The Complainant argues that the disputed domain name fully incorporates and is confusingly similar to HALLIBURTON trademarks, the sole difference being the addition of the two letters “tx” at the ending. The Complainant also argues that this difference fails to distinguish the disputed domain name from the Complainant’s trademark as the trademark is clearly recognizable within the disputed domain name and “tx” clearly refers to identifier for State of Texas, where the Complainant is headquartered. Rights or legitimate interests The Complainant argues that the Respondent has no rights and legitimate interests in the disputed domain name, has no affiliation with the Complainant, and that the Complainant has not given the Respondent permission to register and/or use the Complainant’s trademarks in any manner. In addition, the Complainant states that the Respondent is not known by the disputed domain name and the Complainant submits that the Respondent is not authorized to use the Complainant’s trademark, nor is the Respondent the licensee of the mark. The Complainant further argues that the use of the disputed domain name by the Respondent does not constitute either a bona fide use or a legitimate noncommercial or fair use as it does not resolve an active website as evidenced with Annex 7.
page 3 The disputed domain name was registered and used in bad faith The Complainant initially argues that the HALLIBURTON trademarks are well-known and the Respondent formed the disputed domain name by solely adding a geographic indicator “tx” to the Complainant’s well-known trademark. The Complainant further iterates that the Respondent should be presumed to have known or should have known the Complainant’s trademarks given the international reputation of the HALLIBURTON marks. It has been further argued by the Complainant that use of a privacy or proxy service to mask the Respondent’s identity is also an indicator of bad faith. The Complainant also argue that, given the reputation of the HALLIBURTON trademarks, the Respondent has knowingly registered the disputed domain name in order to mislead the consumers and create an impression of an association with the Complainants. In summary, the Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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. 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 Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Further, the Panel agrees that the addition of a hyphen and “tx” letters does not prevent the finding of confusing similarity, as the Complainant’s trademark HALLIBURTON remains recognizable within the disputed domain name. WIPO Overview 3.0, section 1.8. The applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview 3.0, section 1.11. Here, the TLD “.com” may be disregarded. 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.
page 4 Although 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 difficult task of “proving a negative”, requiring information that is often 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 (although the burden of proof always remains on the complainant). 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. The Panel notes that there is no evidence showing that the Respondent holds any rights for the trademark or name HALLIBURTON. The Panel also notes that there is no evidence showing that the Respondent is authorized or licensed to use the Complainant’s trademarks. Having reviewed the available 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 case file also does not contain any evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. Further, the Panel notes that there is no evidence of the Respondent’s use of, or preparation to use the disputed domain name; and there is also no evidence that the Respondent is making a legitimate noncommercial or fair use under the disputed domain name. The Panel notes that the disputed domain name does not resolve to an active website, which constitutes passive holding and, as such, has not been used in connection with a bona fide offering of goods or services. 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 Respondent more likely than not was aware of the trademark HALLIBURTON, as the Complainant’s trademark registrations predate the registration date of the disputed domain name. According to the evidence submitted by the Complainant, the Panel finds that the Respondent knew or should have known about the Complainant’s rights (and such information could readily have been reached by a quick online search; see Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). In addition, previous UDRP panels have held that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. Furthermore, the Panel notes that the inclusion of the letters “tx” within the disputed domain name, seemingly referring to the state that the Complainant is headquartered, further indicates that the Respondent was aware of the Complainant at the time of the registration which reinforced the finding of bad faith registration of the disputed domain name.
page 5 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 available 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. Although 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 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. /Ezgi Baklacı Gülkokar/ Ezgi Baklacı Gülkokar Sole Panelist Date: February 27, 2024
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