The Complainant is Saudi Arabian Oil Co., Saudi Arabia, represented by Fish & Richardson P.C., United States of America (“United States”).
The Respondent is Default Auction Contact / Sebastian Haigh, Oai, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020 and August 26, 2020, the Registry 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on September 3, 2020 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 September 3, 2020. 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 September 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2020. The Respondent sent an email communication to the Center on August 26, 2020, providing his contact details and referring to a previous communication with the Complainant. However, the Respondent did not submit any response to the Complainant’s contentions.. Accordingly, the Center proceeded with the Panel appointment process. The Center appointed Luca Barbero as the sole panelist in this matter on October 8, 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, founded in 1933, is an oil company operating in Saudi Arabia, the United States of America (the “United States”), the United Arab Emirates, China, Egypt, India, Japan, the Netherlands, Singapore, Republic of Korea, and the United Kingdom. The Complainant is the owner of several trademark registrations for ARAMCO and SAUDI ARAMCO, including the following, as per trademark certificates submitted as annexes to the Complaint: - European Union trademark registration No. 012676045 for ARAMCO (word mark), filed on March 10, 2014 and registered on August 15, 2014, in international classes 1, 16, and 42; - European Union trademark registration No. 000918581 for SAUDI ARAMCO (word mark), filed on August 25, 1998 and registered on December 1, 1999, in international classes 4; - United States trademark registration No. 4541437 for ARAMCO (word mark), filed on March 28, 2012 and registered on June 3, 2014, in International class 4. The Complainant has used the trademarks ARAMCO and SAUDI ARAMCO in connection with its oil production and processing since at least as early as 1944 and 1988, respectively, and it has continuously used these trademarks since. “Aramco” is an acronym for “Arabian American Oil Company.” The Complainant operates its main website at the domain name The disputed domain name The Complainant contends that disputed domain name With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is not commonly known by the disputed domain name, that the Respondent is in no way associated or affiliated with the Complainant and has not been granted any rights to use the Complainant’s trademark SAUDI ARAMCO or the disputed domain name. The Complainant further adds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of the disputed domain name in any way as the disputed domain name resolves to a domain auction website. With reference to the circumstances evidencing bad faith, the Complainant claims that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant which is the owner of the corresponding trademark SAUDI ARAMCO. The Complainant emphasizes that offering a domain name for sale at an auction is in itself evidence of bad faith registration. In fact, the Complainant further states, that the Respondent recently contacted the Complainant and conceded that it only registered the domain name for the purpose of transferring the domain name registration to the Complainant, “rather than it potentially falling into the hands of a party that had ill intentions”. Furthermore, the Complainant underlines that keeping a domain name unused and inactive can also be a form of bad faith and in this case the Respondent held the disputed domain name for over two years without any evidence of use, which further supports a finding of bad faith registration. Lastly, the Complainant underlines that the Respondent must have been more than aware of the Complainant’s trademark and products as the trademark ARAMCO is neither a generic nor a descriptive term. Rather, it is an acronym used to refer to “Arabian America Oil Company”. The Complainant therefore concludes that the Respondent was acting in opportunistic bad faith at the time of registering the disputed domain name. Moreover, the Complainant further notes that the Respondent’s knowledge of the trademark is further highlighted by the fact that the Respondent himself conceded that he had full knowledge of the trademark when stated, in the communication to the Complainant’s representative: “[w]e were surprised that your client had not sought to protect this domain name before it came to auction”. The Complainant concludes that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent an email communication to the Center providing his contact details and referring to a previous communication with the Complainant stating in summary that, Respondent buys lots of domain names at auction to secure domains from those who are genuinely acting in bad faith. Respondent placed a default bid at auction, and noting that the Complainant had not sought to protect this domain name before it came to auction, Respondent thought it would be better to temporary stewards of it, rather than it potentially falling into the hands of a party that had ill intentions. Respondent claims that he does not operate “in bad faith”. 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 The Panel finds that the Complainant has established rights over the trademarks ARAMCO and SAUDI ARAMCO based on the trademark registrations cited under section 4 above and the additional trademark certificates submitted as annex 3 to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. In the case at hand, the Panel finds that the disputed domain name is identical to the Complainant’s trademark SAUDI ARAMCO since the trademark is entirely reproduced in the disputed domain name with the mere addition of the ccTLD “.ai”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Moreover, the disputed domain name is also confusingly similar to the Complainant’s trademark ARAMCO, since such trademark is encompassed in the disputed domain name with the addition of the prefix “Saudi” which, being a geographical indicator, does not prevent a finding of confusing similarity. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is identical to trademarks in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response to the Complainant’s contentions, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons. 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 a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Sebastian Haigh, might be commonly known by the disputed domain name. The Respondent’s argument that he registered the disputed domain name for its temporary stewardship to prevent ill intentions is not sufficient to arise rights or legitimate interests under the Policy noting the composition of the disputed domain name, which is identical to the Complainant’s trademark, and the lack of Complainant’s authorization. On the contrary, this explanation along with the composition of the disputed domain name leads the Panel to infer an opportunistic bad faith in the registration of the disputed domain name. Furthermore, there is no evidence that the Respondent might have used the disputed domain name in connection with a bona fide offering of goods or service or for a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant proves that the disputed domain name was registered and is being used by the Respondent in bad faith. As to bad faith at the time of the registration, the Panel notes that, in light of i) the prior registration and use of the Complainant’s trademarks ARAMCO and SAUDI ARAMCO in the United States and internationally, ii) the widely known character of the Complainant’s trademarks and iii) the identity of the disputed domain name with the trademark SAUDI ARAMCO, the Respondent was more likely than not aware of the Complainant’s trademark when it registered the disputed domain name. Moreover, in its communication addressed to the Complainant’s representative after the filing of the Complaint, submitted by the Complainant as Annex 9 to the Amended Complaint, the Respondent implicitly admitted to have been aware of the Complainant’s trademark stating that, upon obtaining the assignment of the disputed domain name at auction for a default bid, it was surprised that the Complainant “had not sought to protect this domain name before it came to auction”. The Panel further notes that, in view of the notoriety of the Complainant’s trademark, the Respondent acted in opportunistic bad faith for the purposes of the Policy at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant. As to the use of the disputed domain name, the Panel notes that, being redirected to a landing page of a domain auction website dedicated to expired “.ai” domain names, it is currently passively held. Prior UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith under certain circumstances, as decided, i.e., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In the present case, in view of i) the distinctiveness and reputation of the Complainant’s trademark SAUDI ARAMCO; ii) the Respondent’s registration of a domain name identical to the Complainant’s trademark SAUDI ARAMCO; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complainant’s contentions; and v) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. See section 3.3 of WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain name in bad faith requirement according to paragraph 4(a)(iii) 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 Luca Barbero
Sole Panelist
Date: October 23, 2020
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