WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tengizchevroil v. Hardinvestments Limited
Case No. D2002-0061
1. The Parties
Complainant is Tengizchevroil, a limited liability partnership, registered in the Republic of Kazakhstan as of April 6, 1993.
Respondent is Hardinvestments Limited which, according to the Whois database, has an address at Akara Bldg, 24 De Castro Street, Wickhams Cay, RoadTown, Tortola, British Virgin Islands.
2. The Domain Name and Registrar
The domain name, which is the subject of this Complaint, is <tengizchevroil.net>.
The Registrar is Intercosmos Media Group, Inc., d.b.a. directNIC.com of 650 Poydras Street, Suite 2311, New Orleans, Louisiana 70130, United States of America.
3. Procedural History
The Complaint was filed by Complainant with the WIPO Arbitration and Mediation Center ("the Center") by e-mail and by hard copy on January 23 and January 25, 2002, respectively. Receipt of same was acknowledged by the Center on January 25, 2002.
The Center requested Registrar Verification from Network Solutions, Inc., the name of the Registrar identified in the Complaint, on January 31, 2002, and was informed on February 5, 2002, that the Registrar was not Network Solutions, Inc. but was Intercosmos Media Group, Inc.
On February 6, 2002, the Center requested Complainant to amend its Complaint to indicate the correct Registrar, namely Intercosmos Media Group, Inc. On February 6, 2002, the Center requested Registrar Verification and received a reply from the correct Registrar, Intercosmos Media Group, Inc.
An Amendment to the Complaint was made to provide the correct name of the Registrar, namely Intercosmos Media Group, Inc., and was forwarded to the Center, by e-mail and hard copy, on February 8 and February 12, 2002, respectively.
On February 15, 2002, the Center confirmed compliance by Complainant with the formal requirements for filing a Complaint, including payment of the prescribed fee. The Panel has reviewed the evidence put forward and agrees with the Centerís assertion that Complainant has complied with the formal requirements, including proper notification to Respondent of the Complaint and the Amendment to the Complaint.
The Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the parties on February 15, 2002.
No Response was received by the Center which forwarded a Notification of Respondent Default to the parties on March 8, 2002.
Having received Ms. Joan Clarkís Statement of Acceptance and Declaration of Impartiality and Independence, on March 21, 2002, the Center forwarded a Notification of Appointment of Administrative Panel to all the parties and indicated a Projected Decision Date of April 4, 2002.
4. Factual Background
Complainant has asserted that it owns the trademark and service mark TENGIZCHEVROIL which it has used in connection with a wide variety of chemical products intended for use in industry, science, photography, agriculture, gardening and forestry. Complainant avers that it has registered its TENGIZCHEVROIL mark in the Republic of Kazakhstan. A copy of the registration, together with a translation into English, is attached to the Complaint as Annex B. According to the translation, the registered mark is a logotype, protected in a white, black and blue combination of colours. The registration was applied for on September 6, 1994 and registration was effected on the State Register of Trade-Marks in Kazakhstan on April 7, 1997.
Complainant further avers that it is a joint venture, and has provided as Annex C an English translation of a Certificate of Re-registration of Complainant as a limited liability partnership, issued by the Republic of Kazakhstan dated June 21, 1999, stating that the first State Registration was April 6, 1993. The location of this limited liability partnership was indicated to be 4664400, Atyrau Oblast, Zhylyol Region, Kararon-1, TCO Village, 34.
There is no information concerning Respondent provided in the material submitted to the Panel except the information given by Complainant, obtained from the Whois database, that Respondent is Hardinvestments Limited, located in the British Virgin Islands.
5. The Partiesí Contentions
As no Response has been filed, the only contentions are those put forward by Complainant.
By its Amended Complaint filed by e-mail and hard copy, on February 8 and 12, 2002, Complainant has corrected the name of the Registrar of the disputed domain name from Network Solutions, Inc., originally referred to in the Complaint, to the correct name, namely Intercosmos Media Group, Inc.
Complainant states that it is the owner of the trademark and service mark TENGIZCHEVROIL , that it has used the mark in association with a wide variety of chemical products, and that the mark is registered in the Republic of Kazakhstan as of April 6, 1993.
Complainant further states that "over the years" it has invested hundreds of millions of dollars in advertising and promoting the TENGIZCHEVROIL mark, and that as a result of Complainantís extensive use, advertising and promotion, the mark has become famous, distinctive and well-known.
Complainant submits that Respondentís domain name is not only confusingly similar to Complainantís registered trademark, in addition it contains Complainantís identical trademark.
Complainant also asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, that it does not have the right to use the trademark and service mark embodied in the domain name under United States law, that it cannot possibly use its domain name over the internet without using telecommunication modalities that are subject to the laws of the United States, that Complainant has not licensed Respondent to use its trademark, that Respondent has no relationship with Complainant that would entitle it to use Complainantís trademark and has no legitimate interests in using its domain name in a commercial way.
Complainant further asserts that Respondent is not using the subject domain name and that Respondentís web site is not functioning and that, accordingly, Respondent does not have a legitimate business interest in using the web site which it has owned for two years.
Complainant further asserts that the disputed domain name was registered and is being used in bad faith, that Respondent selected a domain name that incorporates Complainantís registered trademark for illegitimate commercial gain purposes to attract customers to sell Respondentís products.
Complainant also asserts that any person having knowledge of the trade name and trademark of Complainant would assume that the disputed domain name is associated with Complainant.
Complainant also states that Respondent knew that, by taking control of the domain name, it would interfere with Complainantís business by diverting potential customers away from Complainantís actual web sites and by creating among potential customers the mistaken belief that the disputed domain name site is related to the actual web site of Complainant.
Complainant makes numerous assertions based upon the similarity between the disputed domain name and Complainantís trademark, leading to confusion.
Complainant requests that the Administrative Panel issue a Decision that the disputed domain name be transferred to Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") states that in order to be successful, Complainant has the burden of proving that all of the following three elements are present in its Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
(i) Identity or Confusing Similarity of the Domain Name to a Trademark or Service Mark in Which Complainant Has Rights
The Panel confirms, as has been found in many prior decisions, that the suffix ".net" should not be considered in determining the question of identity or confusing similarity of the disputed domain name to a mark of Complainant.
The Panel finds that the disputed domain name <tengizchevroil.net> is identical to Complainantís unregistered trademark TENGIZCHEVROIL and is confusingly similar to Complainantís registered mark in logotype form.
Complainant has therefore satisfied the conditions for the first element to be successful.
(ii) Absence of Rights or Legitimate Interests of Respondent in the Domain Name
There is no evidence whatsoever before the Panel to indicate that Respondent has any rights or legitimate interests in the disputed domain name. No evidence or argumentation has been provided by Respondent and there is no indication Respondent made any use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.
Further, there is no indication that Respondent has been commonly known by the domain name.
Finally, there is no indication that Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. In fact, there is no indication of any use whatsoever of any kind being made of the domain name or its site by Respondent
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name and that the conditions for the second element have been satisfied.
(iii) Registration and Use of the Domain Name in Bad Faith
As found under (ii) above, Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence before the Panel of a bona fide offering of goods or services which Respondent made or intended to make of the disputed domain name, or of any preparations for same.
The domain name is highly unusual. The Panel finds there is no logical explanation for the choice of this name other than to associate it with the name or the unregistered or registered marks of Complainant.
The Panel concludes that the disputed domain name was registered in bad faith.
As to use of the domain name, as opposed to its registration, the disputed domain name does not resolve to a web site. There is no evidence that such a web site is being established. There is in fact no use by positive action of the domain name, whether by advertising or by offering the domain name for sale or otherwise.
Numerous decisions have held that passive holding, as well as active use, of a domain name, may constitute "use" as referred to in the third element (registration and use in bad faith), provided other examples of bad faith are present (WIPO Case No. D2000-0003 Telstra Corporation Limited v. Nuclear Marshmallows).
In the present case Complainant has alleged that its trademark is famous and widely known and there is no evidence to the contrary. Complainantís trademark is unique, as far as this Panel is aware, and certainly is highly unusual and possessed of distinctive character.
The Panel concludes it would not be possible for Respondent to make any actual or contemplated active use of the domain name which would not result in confusion by diverting persons wishing to access a web site of Complainant and leading them to a site established by Respondent under the disputed domain name.
The Panel therefore concludes that Respondentís passive holding of the domain name satisfies the requirement that the domain name is used in bad faith by Respondent.
The conditions for the third element are therefore satisfied.
The Panel has found that the domain name in dispute is identical to the unregistered trademark and is confusingly similar to the registered trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. The Complaint therefore succeeds.
Accordingly, the Panel directs that the registration of the domain name <tengizchevroil.net> be transferred to Complainant.
Dated: April 4, 2002