The Complainant is Saudi Arabian Oil Co., Saudi Arabia, represented by Fish & Richardson P.C., United States of America (“United States”).
The Respondent is Zhou Tianwu, China. 2. The Domain Names and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2020. On August 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2020, 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 August 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2020. On September 7, 2020 and September 10, 2020, the Respondent sent an email to the Center regarding a potential settlement. The Center notified the Parties it will proceed to appoint the Panel on September 14, 2020. On September 15, 2020, the Respondent sent a third email to the Center. The Center appointed Marilena Comanescu as the sole panelist in this matter on September 16, 2020. 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, Saudi Arabian Oil Co. (collectively, with its subsidiaries and related entities, “the Complainant”), is an oil company founded in 1933 and one of the largest oil companies in the world. The Complainant maintains operations in the United States and internationally, with subsidiaries and affiliates in Saudi Arabia, Republic of Korea, China, Egypt, India, Japan, the Netherlands, Singapore, the United Arab Emirates, and the United Kingdom. The trademark ARAMCO is an acronym deriving from Complainant’s former name, Arabian American Oil Company. The Complainant owns numeros ARAMCO trademarks registered worldwide such as the following: - the European Union word trademark registration No. 012676045 filed on March 10, 2014 and registered on August 15, 2014, for goods and services in International Classes 1, 16, and 42; and - the Chinese word trademark registration No. 4512456 registered on September 7, 2008 for services in International Class 37. Previous UDRP panels have found that the Complainant’s ARAMCO trademark is famous worldwide. See Saudi Arabian Oil Co. v. Lim Sang Woon,WIPO Case No. D2019-2212. The Complainant holds the domain name The disputed domain name In April 16, 2020, the Complainant sent an email letter asking a purchase offer from the Respondent. The Respondent replied on April 27, 2020 that it is willing to transfer the disputed domain name for no less than USD 5,000. The Respondent submitted two communications to the Center on September 7, 2020 and September 10, 2020 stating that it is willing to discuss a settlement. Further, since the Complainant did not react to these letters, on September 15, 2020, the Respondent send a third email communication asking the Center what to do next. 5. Parties’ Contentions A. Complainant The Complainant contends that its ARAMCO trademark is well-known and distinctive worldwide; that the disputed domain name is identical to its trademark ARAMCO; that the Respondent has no rights or legitimate interests in the disputed domain name; and, that the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent reacted as above, but did not formally reply to the Complainant’s contentions. 6. Discussion and Findings In view of the abscence of a Response on merits, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (i) the disputed 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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the ARAMCO trademark. The disputed domain name It is well established in decisions under the UDRP that the country-code Top-Level Domain (“ccTLD”) or generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.co”, “.best”, “.ai”) may typically be disregarded for the purpose of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Given the above, the Panel finds that the disputed domain name is identical to the Complainant’s trademark ARAMCO, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that the Respondent does not hold any trademark rights, license, or authorization whatsoever to use the mark ARAMCO, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “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”. See section 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case. There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name or that the Respondent made a bona fide offering of goods or services or a legitimate noncommercial use under the disputed domain name. In fact, the Respondent registered the disputed domain name incorporating a third party’s trademark widely used worldwide, without any authorization and keeps it inactive. Further, the disputed domain name is identical to Complainant’s trademark and, generally, UDRP panels have found that such domain names carry a high risk of implied affiliation. See section 2.5.1 of theWIPO Overview 3.0. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant holds trademark rights for ARAMCO for more than seven decades. Due to its extensive use and marketing, the ARAMCO trademark has become distinctive and enjoys significant reputation in its field of activity. The disputed domain name was registered well after the Complainant’s mark had been in use and incorporate the Complainant’s mark in its entirety. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. At the time of filing the Complaint the disputed domain name resolved to an error page. From the inception of the UDRP, UDRP panels have found that the non-use of a domain name (including a blank or “coming soon” or other similar inactive page) would not prevent a finding of bad faith under the doctrine of passive holding. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be relevant circumstances found to be indicative of bad faith include the degree of distinctiveness or reputation of the Complainant’s mark and the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good faith use. See section 3.3 of the WIPO Overview 3.0. The Complainant’s trademark enjoys worldwide reputation and there is no plausible reason for the Respondent to choose and register the disputed domain name other than to create confusion or association with the Complainant and its ARAMCO mark. Further, paragraph 4(b) of the Policy provides a non-exhaustive list of bad faith circumstances that may be found in UDRP disputes and is evidence of registration and use iin bad faith. Such an example is provided in paragraph 4(b)(i) of the Policy where the respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or a competitor of it, for valuable consideration in excess of the out-of-pocket costs directly related to that domain name. According to Annex 8 to Complaint, upon Complainant’s request, the Respondent asked the amount of USD 5,000 for the transfer of the disputed domain name and did not provide any evidence documenting the expenditure or anyhting supporting the significant amount requested. For the above, the Panel finds applicable the provisions of the paragraph 4(b)(i) of the Policy as well. It has been found that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, bad faith presumption of registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu
Sole Panelist
Date: September 25, 2020
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