The Complainant is Saudi Arabian Oil Co. of Dhahran, Saudi Arabia, represented by Fish & Richardson P.C., United States of America.
The Respondent is Saeid Alinejad of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (“.aeDA”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2018. On April 3, 2018, the Center transmitted by email to .aeDA a request for registrar verification in connection with the disputed domain name. On April 4, 2018, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 2, 2018.
The Center appointed Assen Alexiev, Christiane Féral-Schuhl, and Nicholas Weston as panelists in this matter on May 28, 2018. The Panel finds that it was properly constituted. Each member of 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. was founded in 1933. Since 1944, it has continuously used the trade name ARAMCO (an acronym for “Arabian American Oil Company”) in connection with its oil production and processing. The Complainant and its affiliates maintain operations in Saudi Arabia, the United Arab Emirates, the United States of America, China, Egypt, India, Japan, the Netherlands, Singapore, the Republic of Korea, and the United Kingdom of Great Britain and Northern Ireland, and is estimated to be the largest oil company in the world.
The Complainant notably owns numerous trademark registrations for the sign ARAMCO (the “ARAMCO trademark”) including the following examples:
- the ARAMCO trademark with registration No. 000918581, registered in the European Union on December 1, 1999 for goods in International Classes 1, 16 and 42;
- the ARAMCO trademark with registration No. 30129, registered in the United Arab Emirates on January 8, 2002 for goods in International Class 4;
- the ARAMCO trademark with registration No. 28968, registered in Bahrain on December 8, 2010;
- the ARAMCO trademark with registration No. 142753, registered in Kuwait on July 8, 2015;
- the ARAMCO trademark with registration No. 21804, registered in Oman on September 28, 2004;
- the ARAMCO trademark with registration No. 98553, registered in Qatar on July 26, 2016;
- the ARAMCO trademark with registration No. 143306351, registered in Saudi Arabia on October 2, 2013;
- the ARAMCO trademark with registration No. 012676045, registered as a European Union trademark on August 15, 2014, for goods and services in International Classes 1, 16 and 42; and
- the ARAMCO trademark with registration No. 4,541,437, registered in the United States of America on June 3, 2014 for goods in International Class 4.
The Complainant is also the owner of the domain name , registered on January 27, 1994. This domain name is used by the Complainant as its official website, through which it advertises and promotes the services offered under its ARAMCO trademark.
The disputed domain name was registered on July 19, 2016. It is associated to a website that advertises the oil and gas business of an entity named “Aramco Oil”, also referred to as “Dubai Aramco Petro Oil Company” and “Aramco Dubai”, that the website describes as [sic] “The Worlds Best & the largest Crude Oil And The gas trading company in Dubai”. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the ARAMCO trademark, because it incorporates this trademark with the addition of the word “oil”, which is descriptive of the goods and services that the Complainant offers under the ARAMCO trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as he is not associated or affiliated with the Complainant and the latter has not authorized the Respondent to use the ARAMCO trademark. According to the Complainant, the Respondent is not commonly known by the disputed domain name, has not used it in connection with a bona fide offering of goods or services and has not put it to a legitimate noncommercial or fair use. Rather, the Complainant argues the Respondent has registered the disputed domain name with the intent to divert consumers to its website by trading on the goodwill and fame of the ARAMCO trademark, and has used it to offer competing services to those of the Complainant or to phish for Internet users’ personal information. An Internet search for the trade names used on the Respondent’s website does not reveal any evidence that there is a Dubai entity operating under these names. Nonetheless, the Respondent’s website states that “ARAMCO OIL IS THE WORLDS Best & the largest Crude Oil And The gas trading company in Dubai. Operating & developing all petroleum products.” According to the Complainant, this evidences an intent of the Respondent to pass off its website as being sponsored by or affiliated with the Complainant. The Respondent’s website invites viewers to submit business inquiries via a contact form, which requires them to input their names, phone numbers and email addresses. To the Complainant, this contact form is likely being used for a phishing scheme to obtain personal information from Internet users seeking the Complainant’s products or services.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. First, the Complainant considers that, given its international success, the Respondent most likely knew of its ARAMCO trademark when it registered the disputed domain name. In addition, the Complainant argues the Respondent used the disputed domain name to offer services similar to those of the Complainant, thus seeking to confuse consumers and divert them to the Respondent’s website for commercial gain by trading on the fame of the Complainant’s ARAMCO trademark. Such use of the disputed domain name may disrupt the Complainant’s business. The Complainant eventually points out that the Respondent is also using the disputed domain name to phish for Internet users’ personal information.
The Complainant submits that on December 1, 2017, it contacted the Respondent to request the transfer of the disputed domain name and to cease the use of any term confusingly similar to the ARAMCO trademark and that the Respondent has never responded to this letter. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 6(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 respect of the disputed domain name; and
(iii) the Respondent has registered or is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (Registrant) to retain Registration or use of the disputed Domain Name […]”.
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a Response addressing the contention of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence and the Panel finds it has thus established its rights in the ARAMCO trademark.
The Panel notes that, similarly to the situation under the ICANN’s Uniform Domain Name Dispute Resolution Policy (“UDRP”), a common practice has emerged under the Policy to disregard in appropriate circumstances the country code Top-Level Domain (“ccTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 6(a)(i).1 The Panel sees no reason not to follow the same approach here, so it will disregard the “.ae” ccTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the section “aramcooil”, which contains the elements “aramco” and “oil”. The “aramco” element is identical to the ARAMCO trademark, while the element “oil” is descriptive of the goods offered by the Complainant and is insufficient to avoid confusing similarity. In the Panel’s view, the inclusion of this combination in the disputed domain name may lead Internet users to believe that the disputed domain name represents the official online location of the Complainant for the United Arab Emirates.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ARAMCO trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in proceedings under the Policy is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Parties are not affiliated, that the Respondent has not been authorized by the Complainant to use the ARAMCO trademark, and that the Respondent is not commonly known by the disputed domain name. Rather, the Respondent has used the disputed domain name in relation to a website falsely trying to impersonate the Complainant and to phish consumers’ data. Thus, 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 alleged that it has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding. It has not responded to the Complainant’s cease and desist letter either.
The disputed domain name is registered under the “.ae” ccTLD and incorporates the ARAMCO trademark entirely with the addition of the term “oil”, which is descriptive of the main product traded by the Complainant. This makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant for its ARAMCO products for the United Arab Emirates. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that features the ARAMCO trademark and offers oil and gas products and related services that are identical or similar to those of the Complainant.
On the basis of the above, the Panel is satisfied that the Respondent, being well aware of the Complainant, is likely to have registered and used the disputed domain name in an attempt to exploit the popularity of the ARAMCO trademark to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location of the Complainant, without disclosing the lack of any relationship with or endorsement by the Complainant. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered or is Being Used in Bad Faith
Paragraph 6(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“i) circumstances indicating that you have registered or you have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name Registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
ii) you have registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that you have engaged in a pattern of such conduct; or
iii) you have Registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The provisions of paragraph 6(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain name fully incorporates the ARAMCO trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name is linked to a website offering products and services identical or similar to the Complainant.
On the basis of the above, and in view of the considerations of the Panel set out in the section related to rights and legitimate interests, the Panel finds that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the ARAMCO trademark in an attempt to attract traffic to the disputed domain name and to the associated website by confusing Internet users that they are reaching an official online location of the Complainant. On the basis of the above, the Panel accepts that this conduct of the Respondent amounts to bad faith registration of the disputed domain name.
Further, a gap of ten years between registration of a complainant’s trademarks and respondent’s registration of the disputed domain name (containing the trademark) can indicate bad faith: (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the disputed domain name nearly two decades after the Complainant established registered trademark rights in the ARAMCO mark.
The Respondent has not denied that the disputed domain name is being used in connection to a website that features the ARAMCO trademark and offers products and services that are competitive to those of the Complainant without disclosing the lack of relationship between the Parties. Such use may confuse Internet users that they are offered products and services by the Complainant itself. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s ARAMCO trademark as to the source, sponsorship, affiliation, or endorsement by the Complainant of the Respondent’s website and of the products and services offered at the Respondent’s website. Therefore, the Panel finds that the disputed domain name has been used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Assen Alexiev
Presiding Panelist
Christiane Féral-Schuhl
Panelist
Nicholas Weston
Panelist
Date: June 11, 2018
1 The Panel also notes that, due to substantive and procedural similarities between the Policy and UDRP, the Panel has cited authorities decided under the UDRP where appropriate.
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