Complainant is Suncor Energy Inc. of Calgary, Alberta, Canada, represented internally.
Respondent is Kean Lee Lim of Mannheim, Germany.
The Domain Names <www-petro-canada.com> and <www-petro-points.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2010. On March 5, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On March 7, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 29, 2010.
The Center appointed Andrew Mansfield as the sole panelist in this matter on April 7, 2010. 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.
Complainant is an integrated energy company headquartered in Calgary, Alberta, Canada. Petro-Canada was one of Canada's largest oil and gas companies, operating in both the upstream and downstream sectors of the oil and gas industry, both in Canada and internationally, providing world-class petroleum products and services. On August 1, 2009, Suncor Energy Inc. and Petro-Canada merged to form Complainant, Suncor Energy Inc.
Complainant, through operations formerly owned by Petro-Canada, operates a network of more than 1,500 retail gas stations and wholesale outlets, as well as 223 truck stop facilities across Canada. The gas stations, outlets and truck stops are branded with the PETRO-CANADA and PETRO-CANADA (and design) trademarks.
Complainant also produces more than 350 lubricant products, which are sold all over the world. The lubricant products are branded with the PETRO-CANADA and PETRO-CANADA (and design) trademarks.
Complainant provides a loyalty program to customers at its retail Petro-Canada gas stations which is called the Petro-Points program. Participants in the program are given a loyalty card that is used when fuel and convenience store items are purchased. Complainant also sells gas cards for use at its fuel locations.
Complainant owns numerous Canadian trademark registrations for the trademark PETRO-CANADA in association with gas stations, truck stops, and lubricant products. These include Canadian Trademark registrations 354921 (April 21, 1989), 352720 (March 3, 1989), 372378 (August 24, 1990), 393165 (January 24, 1992). It also owns registration 432489 (August 26, 1994) for PETRO-POINTS used in association with customer loyalty programs. Complainant also possesses design marks specified in some of the trademark registrations listed above.
Respondent registered the domain name <www-petro-canada.com> on September 6, 2009 and the domain name <www-petro-points.com> on September 8, 2009 using the Registrar GoDaddy.com, Inc.
Complainant asserts that the domain name <www-petro-canada.com> is identical and confusingly similar to the registered PETRO-CANADA and PETRO-CANADA (and design) trademarks and the <www.petro-canada.com> domain name in which Complainant has rights. Complainant alleges that Respondent's <www-petro-canada.com> domain name incorporates the Complainant's trademark in its entirety. Further, Complainant alleges that the domain name <www-petro-points.com> is identical and confusingly similar to the registered PETRO-POINTS and PETRO-POINTS (and design) trademarks and the <www.petro-points.com> domain name in which Complainant has rights.
Finally, Complainant alleges that Respondent's <www-petro-points.com> domain name incorporates Complainant's trademark in its entirety.
Complainant's Petro-Canada trademarks have been registered since as early as 1989, and its Petro-Points trademarks have been registered as early as 1994. Complainant demonstrates that the registration of Complainant's trademarks substantially predates the registration of the Domain Names, which were registered in 2009. Pursuant to the registration information submitted, Complainant indicates it has the exclusive right to use its trademarks in Canada and in many other jurisdictions, and that right has been infringed by Respondent
Complainant alleges that the Domain Names combine Complainant's well-known marks with the prefix “www-”, the well-known acronym for “World Wide Web” that is an extremely common prefix in the context of domain names. The addition of the prefix “www-” in front of Complainant's well-known trademarks, Complainant argues, is designed to take advantage of the mistake likely to be made by Internet users when trying to access Complainant's websites at “www.petro-canada.com” and “www.petro-points.com”. Complainant argues that it has been established in numerous cases that the addition of a generic or descriptive term to an otherwise distinctive or well-known trademark does not serve to distinguish the Domain Names from Complainant's trademarks.
Complainant alleges that Respondent should be considered as having no rights or legitimate interests in respect of the Domain Names. Complainant indicates that it has not licensed rights to the marks to Respondent, there is no evidence of preparation by Respondent for use of the marks in a bona fide offer of goods or services, and Respondent is not making fair use of the marks, among other arguments.
Complainant states that the Domain Names have been registered and used in bad faith by Respondent. Respondent is misdirecting Internet users seeking Complainant's websites, Complainant alleges, and the likelihood of confusion is being exploited to charge confused Internet users a fee for entering a contest that appears on their phone bill.
For all of these reasons, Complainant requests that the Domain Names be transferred to Complainant.
Respondent did not reply to Complainant's contentions.
Respondent did not file a Response to the Complaint. Because of this lack of response, the Panel must decide the dispute based upon the Complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under Policy, paragraph 4(a), Complainant must prove each of three elements of its case as to each Domain Name in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Respondent has a long history of registering famous marks as domain names by adding “www-” to the domain names. Many of the issues in this case were addressed in Canadian Tire Corporation, Limited v. Kean Lee Lim, WIPO Case No. D2009-1226. The Panel takes note of the careful reasoning of that prior decision concerning the nearly identical conduct of this Respondent in regards to trademarks owned by Canadian Tire Corporation.
Complainant clearly possesses legal rights in the PETRO-CANADA and PETRO-POINTS trademarks by reason of its long-term use in Canada, acquired distinctiveness, and registration by the Canadian Intellectual Property Office.
The Domain Names are confusingly similar to Complainant's trademarks. The Domain Names incorporate either the PETRO-CANADA or PETRO-POINTS trademarks in their entirety, which prior UDRP Panels have held to be sufficient to support a finding of confusing similarity. Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
The addition of the prefix “www-” to Complainant's trademark does not negate confusing similarity. The letters “www” are commonly used to refer to the World Wide Web. The letters are no distinctive. The addition of such generic, no distinctive letters to the trademark does not distinguish the Domain Name from Complainant's trademark. See Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639 (<wwwairfrance.com>); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (<www-wal-mart.com>). The use of the dash after the letters www has been found by prior panels to be nondistinctive and also to constitute a form of typosquatting. Joanne Rowling v. Alvaro Collazo, WIPO Case No. D2004-0787 (<www-jkrowling.com>); Viacom International Inc. v. Erik Peterson, WIPO Case No. D2001-0346 (<www-mtv.com>); AT&T Corp. v. Byeong Deog Im, WIPO Case No. D2004-0026 (<www-att.com>).
Complainant has established that the Domain Names are confusingly similar to Complainant's PETRO-CANADA and PETRO-POINTS trademarks in which it has established legal rights.
Respondent is not using the Domain Names in connection with any bona fide offerings of goods or services. Policy, paragraph 4(c)(i). The fact that Respondent commercially gains from charges associated with the “contest” located on Respondent's websites at the Domain Names supports a finding that Respondent selected the Domain Names in order to create the false impression of association with Complainant's business. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397. Respondent uses the Domain Names to divert Internet traffic from Complainant's websites to lure the user into a contest for which the user must pay an entry fee. Such use can in no way represent either a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use of the Domain Names under Policy, paragraph 4(c)(iii). This is clearly a commercial venture on Respondent's part based on a highly misleading use of Complainant's name and trademark.
Complainant has not licensed or consented to Respondent's registration and use of a domain name incorporating either the PETRO-CANADA or PETRO-POINTS trademarks. There is no evidence that Respondent has been commonly known by the Domain Names. Policy, paragraph 4(c)(ii). See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question).
The Panel finds that Complainant has made a prima facie case that Respondent possesses no rights or legitimate interests in the Domain Names. Respondent, in default, failed to produce evidence to rebut Complainant's prima facie case and has not, therefore, established that he has rights or legitimate interests in the Domain Names. The Panel thus concludes that Complainant has established that Respondent has no rights or legitimate interests in the Domain Names. Policy, paragraph 4(a)(ii).
Complainant must demonstrate that Respondent both registered and is using the Domain Names in bad faith. Policy, paragraph 4(a)(iii).
Paragraph 4(b)(iv) of the Policy provides that the following, among other factors, shall be evidence of the registration and use of a domain name in bad faith:
by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site . . . 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.
Respondent's use fulfills this factor. Respondent is clearly using a misleading association with Complainant and the resulting confusion to divert the Internet user to Respondent's websites for the purpose of Respondent's own commercial gain. This is sufficient evidence of bad faith registration and use of the Domain Names. The Policy does not require proof of actual economic harm to establish bad faith; the bad faith lies in the intentional use of confusion to divert Internet traffic to one's own website for commercial purposes. See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118.
The Panel finds that Respondent's long and widespread history of registering apparently well-known trademarks as domain names, with the addition of the “www-” prefix, is further evidence of bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <www-petro-canada.com> and <www-petro-points.com> be transferred to Complainant.
Dated: April 21, 2010