ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Subsea 7 Limited v. Денис Валерьевич Сантини Case No. D2024-4476 1. The Parties The Complainant is Subsea 7 Limited, United Kingdom, represented by Keltie LLP, United Kingdom. The Respondent is Денис Валерьевич Сантини, Ukraine. 2. The Domain Name and Registrar The disputed domain name is registered with Internet Invest, Ltd. dba Imena.ua (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2024. On October 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2024, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Privacy Protection Service) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 4, 2024, 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 November 4, 2024. On November 4, 2024, the Center informed the parties in Ukrainian and English, that the language of the registration agreement for the disputed domain name is Ukrainian. On November 5, 2024, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not submit any comment on the Complainant’s submission. 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 in English and Ukrainian, and the proceedings commenced on November 11, 2024. In
page 2 accordance with the Rules, paragraph 5, the due date for Response was December 1, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2024. The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on December 9, 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 a global leader in the delivery of offshore projects and services for the energy industry. The Complainant has rights over the SUBSEA 7 mark for which it holds several trademark registrations, such as: - United Kingdom Registration No. UK00002304950, registered on April 21, 2006; - European Union Registration No. 011426335, registered on May 13, 2013; - International Registration No. 1147789, registered on December 14, 2012; - Canadian Trade Mark Registration No. TMA890571, registered on November 21, 2014. All of these registrations cover classes 7, 37, 39, and 42. The Complainant has intensively used these trademarks since their registration, and has a strong presence online. The disputed domain name was registered on October 25, 2024. At the time the Complaint was filed, the disputed domain name resolved to the Registrar parking page. According to the Registrar information, the Respondent is the Ukrainian individual located in Ukraine. 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. The Complainant has received considerable publicity by reference to its corporate name over the years and has registered its SUBSEA 7 marks in many countries around the world, transacting an enormous volume of business by reference to its marks. The disputed domain name reflects the Complainant’s SUBSEA 7 mark in its entirety and is therefore virtually identical. The additional word “offshore” does not distinguish the disputed domain name from the Complainant’s mark as it is descriptive of the goods and services offered by the Complainant. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known as “Subsea7” or “Subsea7offshore”. The Complainant has not given its consent for the Respondent to use its registered mark in the disputed domain name, and the Respondent does not own any registered rights in any marks which comprise part or all of the disputed domain name. The disputed domain name directs to an inactive webpage, and 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. It is only a matter of time before the disputed domain name is used in connection
page 3 with a commercial offering that would take unfair advantage of the Complainant’s rights for commercial gain. The Complainant’s reputation in its global portfolio of SUBSEA 7 marks is such that Internet users would inevitably view the disputed domain name and mistakenly associate its content with the Complainant. The Respondent registered and uses the disputed domain name in bad faith. The Complainant’s mark is well known in the industry and no other individual or business owns trademark rights (whether registered or unregistered) in the SUBSEA 7 mark. The term “subsea7” is not descriptive in any way, and the combination of words and numerals has no generic or dictionary meaning. Thus, it is highly likely that the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name and it is inevitable that visitors to the disputed domain name would mistakenly believe that the Respondent is associated with the Complainant. The disputed domain name directs to an inactive webpage and thus it is being held passively by the Respondent. Passive holding of a domain name which cannot be used legitimately by anyone other than the mark holder is registration and use in bad faith. UDRP decisions have historically set forth that there can be a finding of registration and use in bad faith where there is passive use of a widely known mark in a domain name where there is no response and no explanation as to why the use could be in good faith. In the absence of a response from the Respondent, on the balance of probability, the Respondent has registered and used the disputed domain name in bad faith. The Respondent’s use of the disputed domain name constitutes bad faith insofar as the Respondent’s interest cannot be legitimate. The Respondent may intend to sell the disputed domain name to the Complainant, a competitor, or a critic, or alternatively, it may intend to confuse consumers as to an affiliation or connection with the Complainant. In any event, the Respondent registered and retains the disputed domain name which it cannot use lawfully. That in and of itself amounts to registration and use in bad faith. The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural considerations – Respondent’s location Under paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition. The location of the Respondent, Денис Валерьевич Сантини, disclosed by the Registrar appears to be in Ukraine, which is subject to an international conflict at the date of this Decision that may impact case notification. It is therefore appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue. The Respondent’s mailing address is reported to be in Ukraine, which is subject to a conflict that may affect delivery of the written notice by postal mail, in terms of paragraph 2(a)(i) of the UDRP. The Panel notes that the record shows that the written notice could not be delivered to the address disclosed by the Registrar in its verification. However, it appears that the Notification of Complaint’s emails were delivered to the Respondent’s email address, as provided by the Registrar. Therefore, there is no evidence that the case notification was not successfully delivered to the disclosed Respondent’s email address.
page 4 The Panel concludes that the Respondent, allegedly located in Ukraine, has been given a fair opportunity to present its case, and so that the administrative proceeding takes place with due expedition, the Panel will proceed to a Decision accordingly. Previous Panels addressing this procedural issue with the same factual background came to a similar conclusion. See Netbet Entreprises Ltd v. Privacy Service provided by Withheld for Privacy ehf / Vladimir Vladimir, Crowd inc, WIPO Case No. D2022-1420, Artemis Investment Management LLP v. Regery Ukraine WIPO Case No. D2023-2289, Ares Management LLC v. Pavel Rubtsov, Alexey Sokolov, WIPO Case No. D2023-0997. B. Language of the Proceeding The language of the Registration Agreement for the disputed domain name is Ukrainian. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complaint was filed in English. The Complainant requested that the language of the proceeding be English for several reasons: because the Registrar offers an English language option and has its public agreement in English, indicating it can facilitate proceedings in English. The Complainant, being a United Kingdom company, would incur additional costs if required to translate the complaint into Ukrainian. Additionally, the disputed domain name is in English/Latin characters, suggesting the Respondent can understand English, and thus would not be prejudiced by the proceedings being in English. The Respondent did not make any specific submissions with respect to the language of the proceeding and the Respondent did not comment on the Complainant’s request for the language of the proceeding be English. In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1). Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. C. 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 entirety of the SUBSEA 7 mark is reproduced 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. The generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and, as such, is disregarded under the first element of the confusing similarity test (WIPO Overview 3.0, section 1.11.1). Therefore, the Panel disregards the gTLD for the purposes of this comparison.
page 5 Although the addition of other terms to the disputed domain name such as “offshore” here may bear on assessment of the second and third elements, the Panel finds the addition of such term 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. The Panel finds the first element of the Policy has been established. D. 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. 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. 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. According to the Complainant, the Respondent is not an authorized or licensed to use the SUBSEA 7 trademark in the disputed domain name. There is also no evidence suggesting that the Respondent has been known by the name “SUBSEA 7” or “SUBSEA7OFFSHORE”. The Respondent has not made any demonstrable preparations to use the disputed domain name for legitimate purposes, and that the disputed domain name falsely suggests affiliation with Complainant and its mark. Because the disputed domain name reflects the Complainant’s name and mark in its entirety (though followed by “offshore”), and thus it seems to this Panel that the composition of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0) The Panel finds the second element of the Policy has been established. E. 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. 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 the present case, the Panel established above, the Complainant’s SUBSEA 7 trademark was used in commerce well before the registration of the disputed domain name. The Complainant’s SUBSEA 7 trademark predates registration of the disputed domain name for nearly two decades. Therefore, there is a
page 6 presumption of bad faith registration of the disputed domain name given that it reproduces the Complainant’s SUBSEA 7 trademark entirely. Previous UDRP panels have already recognized the wide reputation of the SUBSEA 7 trademark: “Taking into consideration that the registration and use of the SUBSEA 7 mark preceded the creation of the disputed domain name, that said mark appears to be a distinctive combination of letters and numerals, and that it is uncontested that such mark is well known in its industry, this Panel is of the view that Respondent should have been aware of the existence of Complainant and its mark at the time it obtained the registration of the disputed domain name, which is indicative of bad faith.” See Subsea 7 Limited v. Mark Miller, ca domains, WIPO Case No. D2023-1067. Another UDRP panel also noted: “It is a reasonable inference that the Respondent knew of the Complainant and its well-known SUBSEA 7 trademark at the time when the Respondent registered the Disputed Domain Name and that the Respondent can have had no reason to register the Disputed Domain Name other than for the significance of the SUBSEA 7 element, which is entirely reproduced in the Disputed Domain Name.” See Subsea 7 Limited v. James Huntley, WIPO Case No. D2023-2481. The Panel agrees and considers that the well-known character of the SUBSEA 7 trademark is established. The Panel finds with a high degree of certainty that the Respondent knew of the Complainant’s SUBSEA 7 trademark when registering the disputed domain name. This conclusion is supported by the well-known character of the Complainant’s mark and strong presence of the Complainant online. The Respondent also supplemented the disputed domain name with a dictionary word “offshore”, that is a clear reference the Complainant’s core business in the sphere of delivery of offshore projects and services for the energy industry. Thus, the Respondent’s aim on targeting the Complainant, its reputation and customers is clear to the Panel. Furthermore, the Responded failed to submit a response to disprove allegations of illegal activity or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name. The Panel concludes that the Respondent’s intent for registering the disputed domain name, which reproduces the Complainant’s trademark entirely has always been to capitalize on the goodwill of the Complainant’s trademark. According to previous UDRP panel decisions, passive holding may indeed amount to bad faith use in certain circumstances. See section 3.3 of WIPO Overview 3.0. Furthermore, the Panel finds it implausible that the disputed domain name could be used by the Respondent in good faith considering that it is confusingly similar to the Complainant’s trademarks. The Panel finds that the fact that the disputed domain name does not currently resolve to an active website does not prevent a finding of bad faith in these circumstances. Therefore, based on the confirmed reputation, fame and long term use of the Complainant’s SUBSEA 7 trademark, and in the absence of the response from the Respondent providing any explanation or evidence of actual or contemplated good-faith use, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy. The Panel finds that the Complainant has established the third element of the Policy.
page 7 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. /Oleksiy Stolyarenko/ Oleksiy Stolyarenko Sole Panelist Date: December 26, 2024
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