WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Regal Petroleum Plc. v. Digi Real Estate Foundation

Case No. D2007-0405

 

1. The Parties

Complainant is Regal Petroleum Plc., London, United Kingdom of Great Britain and Northern Ireland, represented by Pinsent Masons Solicitors, United Kingdom of Great Britain and Northern Ireland.

Respondent is Digi Real Estate Foundation, Panama City, Panama.

 

2. The Domain Name and Registrar

The disputed domain name, <regalpetroleum.com>, is registered with Domain Bank, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2007. On March 20, 2007, the Center transmitted by email to Domain Bank, Inc. a request for registrar verification in connection with the domain name at issue. On the same date, Domain Bank, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2007. The email notification, sent to the email address listed in the Whois, was returned as “containing fatal errors.” The courier notification was returned as undeliverable and unclaimed. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 24, 2007.

The Center appointed M. Scott Donahey as the sole panelist in this matter on May 1, 2007. 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

Complainant has traded under the name “Regal Petroleum” since 1998 and has been listed on the Alternative Investment Market of the London Stock Exchange since September 27, 2002. Complainant conducts business in the United Kingdom, the Ukraine, Romania, Egypt, Greece, and Liberia.

Complainant asserts it has generated a considerable amount of goodwill and reputation in its name through its use in the business of international oil and gas exploration for the past nine years.

On December 7, 2000, Complainant registered the domain name at issue. In December 2006, as the result of an “administrative error”, the domain name at issue became available to the general public for registration.

On December 7, 2006, the domain name at issue was registered by Respondent. Respondent is using the domain name at issue to resolve to a website with links to various energy related websites as well as links to various other business websites.

The contact information given in the Whois is false and communications directed to Respondent are returned to the sender.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that the domain name at issue is identical to the business name in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted 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:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no rights or legitimate interests in respect of the domain name; and

(3) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The panel agrees that the domain name at issue is identical to Complainant’s trade name. However, a trade name is not a trademark or service mark. The issue to be resolved is to what degree a trade name is to be protected under the UDRP. In the Second WIPO Internet Domain Name Process, WIPO examined the question as to whether the UDRP process should be expanded to protect trade names, and ultimately made a recommendation against extension of the process.

“318. Despite the majority opinion that protection should be extended to trade names within the DNS, we do not consider that it is appropriate to modify the UDRP so as to allow complaints for the bad faith and misleading registration and use of trade names as domain names for the following reasons:

(i) The international legal principle for the protection of trade names leaves extensive scope to differing national implementations, which is reflected in the diversity of national approaches that was found to exist with respect to the protection of trade names. This national diversity inevitably creates a problem for the choice of applicable law on a global medium. The situation of trade names is, in this respect, akin to that of geographical indications insofar as it would be necessary for a dispute-resolution panel, in the absence of convergent national approaches, to identify the national law that should be applied to determine the existence of a protectable trade name. We do not believe that the law is sufficiently clear on this question, with the consequence that there would be a risk of lack of coherence in decisions, which might engender dissatisfaction and lack of understanding of the procedure.

(ii) The practice in the use of trade names covers a very large range of commercial activity, including very small one-person enterprises operating in very limited geographical areas, as well as very large enterprises operating in global markets. It is certainly the case that very small enterprises operating in limited geographical areas deserve protection for their trade names when the conditions of eligibility for the protection are satisfied. Whether those conditions of eligibility can be identified with precision for disputes in gTLDs on a global medium, however, is problematic. Where a trade name is used in widespread markets, it is often also the subject of trademark protection or satisfies the conditions for protection as an unregistered trademark so as to qualify, in appropriate circumstances, for protection against bad faith, deliberate misuse under the UDRP.

(iii) The UDRP was designed for, and applies to, straight-forward disputes, where there are rights on one side and no rights or legitimate interests on the other side. It was not designed to accommodate disputes involving interests on both sides, which requires a more extensive procedure, perhaps involving the hearing of evidence and oral arguments. Many trade name disputes, because of the relatively light burden imposed to establish eligibility for trade name protection, will involve interests on both sides.

(iv) We are not convinced that sufficient evidence was produced of widespread abuse of trade names through domain name registrations and use.

319. It is not recommended that the UDRP be modified to permit complaints to be made on the basis of abusive registrations and use of trade names per se.”

Second WIPO Internet Domain Name Process, Final Report, September 3, 2001, Sections 318 and 319.

This does not resolve the issue completely, as Section 318 emphasizes that a trade name which satisfies the condition for protection as an unregistered mark may qualify in appropriate circumstances for protection under the UDRP. It is incumbent upon the panel to determine whether, under the present circumstances, Complainant has proven that the trade name at issue is entitled to protection as an unregistered mark.

The WIPO conducted an exhaustive study of the more than 7000 panel decisions that had been issued as of February 2005. That study was reviewed by some of the most experienced of the WIPO panelists, who submitted their thoughts and input. As a result of this effort, WIPO published on its website the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. See http://www.wipo.int/amc/en/domains/search/overview/index.html#18. In Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, WIPO specifically examined panel decisions on the issue of what needs to be shown in order to satisfy the requirements for protection as an unregistered mark:

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.

Id., emphasis added.

In Uitgeverij Crux v. Frederic Isler, WIPO Case No. D2000-0575, the complainant registered its mark more than two years after the respondent registered the domain name at issue. However the complainant produced evidence that it had been using the mark for several years prior to its registration. The panel found that the complainant had established rights in an unregistered mark at some unspecified date prior to the registration of the domain name at issue.

In Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, the panel noted that while the complainant had clearly used the trade name for several years, it was not a registered trademark or service mark. However the complainant produced evidence of longstanding use, including evidence that more than three million tax payers and the public at large viewed the trade name as identifying the complainant as the source of tax services in Norway, citing its 19 county tax offices, 18 tax collector offices, 435 local tax offices, more than 6,000 employees, and more than 3,400,000 Norwegian tax payers. The panel found that this evidence established the complainant’s trade name as an unregistered service mark.

In Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786, the panel found that the complainant had established rights in an unregistered service mark by providing evidence that complainant had used the mark as identifying itself and its services for many years, that in recent years it had invested more than ten million Australian dollars to publicize its services under that unregistered service mark, that it raised an equal amount of annual revenues through the use of the mark, and that it advertised its services under the mark in brochures and other written materials distributed to a wide audience.

In contrast to the above cases, in Amsec Enterprises L.C. v. Sharon McCall, WIPO Case No. D2001-0083, the panel found that the complainant had failed to establish that it had any rights in respect of an unregistered mark. Stating that relevant evidence of secondary meaning could include length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition, the panel noted that the only evidence submitted was the assertion that the trade name had been used for a nine year period, a web page that was in use days before the complaint was filed, and that complainant’s gross sales had exceeded seven million dollars. The panel found that this was not sufficient to establish unregistered trademark rights.

In the present case, Complainant asserts that it has been using the trade name for some nine years. It asserts that it “has generated a considerable amount of goodwill and reputation in the Regal Petroleum name”, but offers no concrete evidence of such goodwill and reputation. Complainant asserts that the domain name at issue was registered by Complainant in December 2000 and was used since until the domain name became available for purchase in December 2006 owing to an unspecified “administrative error”, but fails to submit any evidence as to how it was used.

The panel reluctantly concludes that Complainant has failed to carry its burden of proof that it has rights in an unregistered mark, by failing to submit any evidence in the nature of advertising, revenues, sales, consumer surveys, media recognition, or the like. In arriving at this conclusion, the panel does not reach the issues of whether Respondent has rights or legitimate interests in respect of the domain name at issue or whether the domain name at issue was registered by and is being used by Respondent in bad faith. As it is Complainant’s burden to prove each element in order to prevail, Complainant’s failure to submit any evidence other than conclusory assertions on the issue of rights in an unregistered mark compels the panel to deny the complaint.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


M. Scott Donahey
Sole Panelist

Dated: May 15, 2007