WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bluewater Rubber & Gasket Co v. Mrs Sian Jones / Easyspace Privacy
Case No. D2010-2112
1. The Parties
Complainant is Bluewater Rubber & Gasket Co, Louisiana, United States of America, represented by Law Office of Melissa LaBauve, United States of America.
Respondent is Mrs Sian Jones, Aberaeron, United Kingdom of Great Britian and Northern Ireland and Easyspace Privacy Glasgow, Scotland of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The domain name <bluewaterrubbers.com> is registered with Easyspace.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2010. On December 8, 2010, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name. On December 9, 2010, Easyspace transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name (which differed from the named Respondent and contact information in the Complaint). The Center sent an email communication to Complainant on December 10, 2010 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 10, 2010.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2011. Apart from an email received on December 22, 2010 from Respondent in which Respondent stated the following:
“I received a document from your organization (dated Dec.15th 2010) informing me that a Complaint has been filed against me with the WIPO.
In response I am informing you that I have no connection with either of the companies listed in the document. I have reported this to the police and they are looking into the matter.
The Center acknowledged receipt of this communication stating that the concerned Registrar Easyspace confirmed that the registrant of the disputed domain name is Sian Jones and that the assessment of the identity of the registrant would be in the sole discretion of the panel to determine, and further stating that the Center would include the email communication in the case file of record, which would be forwarded to the Panel upon appointment. The due date for Response was January 4, 2011 (no further communication was received, as such after the Center proceeded with the appointment of the administrative panel).
The Center appointed Mary Padbury as the sole panelist in this matter on February 25, 2011. 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.
The Center received a request to suspend the proceedings on January 7, 2011. The request was made to explore the possible settlement between the parties. The administrative proceeding was suspended until February6, 2011. On February 2, 2011 Complainant lodged Request for Reinstatement of Proceedings with the Center as Respondent advised Complainant that she would not respond to any emails to accomplish the transfer of the domain name since she has no connection with the disputed domain name. The Request to Reinstate Proceedings was sent or transmitted to Respondent on February 2, 2011. The Center confirmed receipt from both parties on February 3, 2011.
4. Factual Background
Complainant is a leading supplier of hoses, hose assemblies and gaskets for the oilfield drilling and production markets, both domestically and internationally. Complainant provides hydraulic and industrial host assemblies and specializes in heavy-duty and light transfer hoses for deep-water offshore rigs and vessels. Complainant is a global leader in the supply of safety break away couplings and dry disconnect and related fittings.
Complainant owns U.S. Trademark Registration No. 3,863,035 for BLUEWATER RUBBER & GASKET, covering custom built hose assembly and installation for others, precision water jet gasket cutting for others; precision knife gasket cutting for others and custom die cutting of gaskets for others. Complainant also uses the common law mark, BLUEWATER RUBBER, in connection with the same goods and services. Complainant has used its BLUEWATER RUBBER & GASKET and BLUEWATER RUBBER mark (the “BLUEWATER RUBBER marks”) since 1979 and has established common law rights in its trademarks.
Complainant’s registration and use of the BLUEWATER RUBBER marks predates the August 19, 2010 registration date of the domain name.
5. Parties’ Contentions
Since July of 1979, Complainant has actively promoted the BLUEWATER RUBBER marks through advertising, publications, trade shows and significant sales in the U.S. and worldwide. As a result, Complainant contends that the BLUEWATER RUBBER marks have acquired substantial goodwill.
Complainant learned that Respondent registered the domain name <bluewaterrubbers.com> after the receipt of emails from third parties reporting an Internet job scam which utilized the domain name. Annex 6 of the Complaint contains representative samples of emails received from a third party regarding the alleged scam. Complainant reported the scam to the Cyber-Crimes Division of the U.S. Federal Bureau of Investigation. Respondent’s “www.bluewaterrubbers.com” website reproduces the majority of Complainant’s website, including links to Complainant’s supplier websites, but not all of the photographic images on Complainant’s website appear to load on Respondent's website, “www.bluewaterrubbers.com”, and the contact information listed on the website, such as the phone number and linked email address, does not belong to Complainant. Annex 4 of the Complaint includes representative printouts from Complainant’s “www.bluewaterrubber.com” website. Annex 7 of the Complaint includes representative printouts from Respondent’s “www.bluewaterrubbers.com” website.
Complainant did not authorize Respondent to use the BLUEWATER RUBBER marks as a trade or service mark or URL. Complainant contends that the fact that Respondent purports to operate a website that duplicates Complainant’s website, including the links to Complainant’s suppliers, shows that Respondent has knowledge of Complainant’s rights in the BLUEWATER RUBBER marks and Respondent has used Complainant’s own website to give effect to an Internet fraud scheme.
Complainant contends that Respondent is using Complainant’s BLUEWATER RUBBER marks in bad faith to divert Complainant’s customers to its own website, which falsely suggests to a consumer that it is owned and operated by the Complainant. Complainant further contends that Respondent registered the domain name to presumably induce customers to attempt to engage Respondent rather than Complainant for oilfield-related services and/or to give effect to an Internet fraud scheme. Respondent’s registration of the domain name prevents Complainant from making a legitimate use of the domain name.
Respondent did not formally reply to Complainant’s contentions apart from the communications received on December 22, 2010 in which Respondent stated the following: ” I received a document from your organization (dated Dec.15th 2010) informing me that a Complaint has been filed against me with the WIPO.
In response I am informing you that I have no connection with either of the companies listed in the document. I have reported this to the police and they are looking into the matter”.
6. Discussion and Findings
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules. Complainant has the onus of proving three elements:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the domain name is identical or confusingly similar to the BLUEWATER RUBBER marks because it incorporates Complainant’s trademark in its entirety.
The addition of an "s" does not preclude confusion.
B. Rights or Legitimate Interests
The Panel must decide whether Respondent has any rights or legitimate interests in respect of the domain name. In doing so, regard may be had to circumstances which might demonstrate rights or legitimate interests to the domain name as follows:
(i) before notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts Complainant's contention that there is no evidence that Respondent has any right or legitimate interest in the domain name.
Respondent appears to be using the domain name to give effect to a fraudulent phishing scheme.
The Panel finds that Respondent has never used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain names in connection with a bona fide offering of goods or services. Rather, the infringing website seems to be operating for the sole purpose of making consumers believe that Respondent is the Complainant and is operating the Complainant’s business to give effect to a fraudulent Internet scheme solely for commercial gain. Such use demonstrates no legitimate interest in the domain name.
Complainant had never consented to Respondent’s use of the BLUEWATER RUBBER marks, and Respondent never requested Complainant’s permission to use the BLUEWATER RUBBER marks or to reproduce the substance and appearance of Complainant’s website.
Respondent has used Complainant’s trademark as a domain name, and appears to be giving effect to a fraudulent Internet scam. Respondent has also utilized Complainant’s content by copying the Complainant’s Web pages, in addition to the use of the Complainant’s source code. This is not a bona fide or legitimate fair or noncommercial use and may constitute copyright infringement.
C. Registered and Used in Bad Faith
The Panel is satisfied that the domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith:
(i) circumstances indicating that the Respondent has registered 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 for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name: or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product of service on its website or location.
It appears Respondent has registered and used the domain name in bad faith by intentionally using the domain name to operate an online fraudulent phishing scheme by posing as Complainant and by intentionally creating a likelihood of confusion with the BLUEWATER RUBBER marks in order to divert Internet traffic from the Complainant to Respondent's website.
Respondent has registered and is using a domain name that reproduces the content of Complainant’s website except for the contact information. Such copying has been found to support a finding of bad faith.
Further, Respondent is using a privacy-shielding service to conceal its identity. While such proxy registration and identity shielding services can serve a legitimate purpose, they are often abused by cyber squatters. Respondent seems to have had knowledge of Complainant’s BLUEWATER RUBBER marks when it registered the domain name and commenced use of the BLUEWATER RUBBER marks on its website. By registering the domain name with knowledge of Complainant’s marks for the purpose of diverting Internet traffic to its own site for commercial gain, and further shielding its identity to avoid accountability for its activity, the Panel finds that Respondent (and its underlying registrant) registered and used the domain name in 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 name, <bluewaterrubbers.com> be transferred to Complainant.
Dated: March 15, 2011