WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hunt Consolidated Inc. v. WhoisGuard, WhoisGuard Protected / E Pc Mash, Olly Junior
Case No. D2012-2087
1. The Parties
Complainant is Hunt Consolidated Inc. (“hereinafter referred to as the “Complainant” or “Company”) of Dallas, Texas, United States of America (“US”), represented by Weil, Gotshal & Manges LLP, US.
Respondent is WhoisGuard, WhoisGuard Protected of Los Angeles, California, US, / E Pc Mash, Olly Junior of Houston, Texas, US.
2. The Domain Name and Registrar
The disputed domain name <huntoilcorp.com> (hereinafter the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2012. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 26, 2012 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 October 31, 2012.
The Center verified that the Complaint together with 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 November 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2012. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on November 22, 2012.
The Center appointed James H. Grossman as the sole panelist in this matter on December 6, 2012. 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
Complaint states that Complainant is a privately held Delaware company that is the parent company of a family of companies that has successfully explored for and produced petroleum products around the world for more than 75 years. Complainant is one of the largest privately held independent oil companies in the world and is currently number 90 on the Forbes list of America’s Largest Private Companies. Exploration and production activities take place in North America, South America, Europe, Australia, and the Middle East. Complainant’s name is derived from Hunt’s founder, “H.L. Hunt”, who was trading oil and gas leases in the 1920’s. Complainant has been incorporated since December 1934 and the name “Hunt” is not only part of its corporate name but is also the primary part of its trademark. Complainant’s trademark HUNT OIL COMPANY (the “Trademark”) was registered in 1936 and has been used in commerce since 1934. Complainant advises that it has filed an application for registration of the trademark HUNT with the United States Patent and Trademark Office. Complainant states that it vigorously protects its trade names and trademarks in order to protect what has become a well-recognized worldwide energy company.
Since January 2000, Complainant has maintained a website at “www.huntoil.com”. Existing and potential customers may visit this web site to find information about the Company.
5. Parties’ Contentions
Complainant registered the Trademark on April 29, 1986 (Registration No. 1,391,309 HUNT OIL COMPANY) with the United States Patent and Trademark Office. It was first used in commerce in 1985. Despite Complainant’s intellectual property rights in its various trade names and trademarks, Respondent was able to register the Disputed Domain Name only this year on April 27, 2012. Complainant advises it first learned of the registration of the Disputed Domain Name in September 2012 when Complainant’s antivirus software provider notified the Company of its existence. According to Complainant, its attorneys, as a result of a WHOIS, found that Respondent was using WhoisGuard as the registrant to conceal its real identity.
The Disputed Domain Name is confusingly similar to Complainant’s trade names and trademarks. The only difference between Complainant’s trademarks and the Disputed Domain Name is the insertion of the generic term “corp”. Complainant cites, inter alia, Farouk Systems Inc. v. QYM, WIPO Case No. D2009-1572, Farouk Systems Inc. v. JYY, WIPO Case No. 1573 and Farouk Systems Inc. v. XR, WIPO Case No. 1584 in which case a transfer of the disputed domain names was ordered for the proposition that the addition of generic terms including, for example, “outlet,” “factory, “shop,” and “sale” to the disputed domain names should be disregarded in determining the question of confusing similarity between the domain names and the trademark; and also Quixtar Investments, Inc. v Dennis Hoffman, WIPO Case No. D2000-0253; PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189, for the proposition that finding mere addition of generic or descriptive terms does not exclude a likelihood of confusion. If one disregards the generic term “corp” and the generic top-level domain “.com”, the Domain Name is identical to Complainant’s Trademark. Further, Complainant states the Disputed Domain Name, by incorporating Complainant’s Trademark in its entirety, establishes the status of confusing similarity under paragraph 4(a)(i) of the Policy, regardless of other terms in the Disputed Domain Name. See e.g., National Football League v. Online Marketing International, WIPO Case No. D2008-2006; Farouk Systems v. Hubei Wuhanski Hubeisheng, Supra. (citing Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
Complainant confirms that it has never granted any authorization to Respondent to use its name or the Company’s Trademark or trade names. Respondent has set up a web site to which the Disputed Domain Name resolves which is almost an identical copy of Complainant’s actual homepage at <huntoil.com>. There is no bona fide offering of goods and services when Respondent trades on the fame of another. Significantly, Respondent cannot assert rights on a fair use argument in that the right to express views about a subject does not translate into a right to identify one’s self as that subject. See e.g., Tia Carrere v. Steven Baxt, WIPO Case No. D2005-1072; Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, WIPO Case No. D2001-1381; Monty and Pat Roberts Inc. v. Bill Keith, WIPO Case No. D2000-0299. Accordingly, Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Finally, as Complainant notes with regard to bad faith, “Respondent has exhibited bad faith by (i) registering the Disputed Domain Name with knowledge of Complainant’s famous marks; (ii) by diverting consumers from Complainant’s web site to Respondent’s web site for its own commercial gain; and (iii) by using the Disputed Domain Name to defraud or scam consumers, causing consumer confusion as to the source, sponsorship or endorsement of the web site, diluting the Company’s brand, and tarnishing the Company’s marks.”
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095.
A. Identical or Confusingly Similar
Complainant has established that it has trademark rights in HUNT OIL COMPANY. Accordingly, the only issue remaining is as to whether the Disputed Domain Name is identical or confusingly similar to the Trademark. As Complainant points out, the mere addition of the generic word “corp” does not change the fact that the Disputed Domain Name looks and reads like Complainant’s trademark. In addition to cases cited by Complainant, see F.Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case. No. D2007-1629. The Panel agrees with the points set forth in detail above set forth by Complainant. The Disputed Domain Name is confusingly similar to the Complainant’s Trademark and domain name.
B. Rights or Legitimate Interests
Simply put, Respondent is not known as or doing business under the name “Hunt Oil Corp”. Respondent has misappropriated the name for his own purposes and without concern for the legitimate trademark owner of the Hunt name. While the web site from the Disputed Domain Name gives the Internet viewer the clear indication that this is Hunt Oil, in fact Respondent not only has no rights given to it by Complainant but also has no rights or legitimate interests whatsoever to pass itself off as a major international energy company. Respondent’s conduct does not constitute a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. See PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc., WIPO Case No. D2000-1666 finding that the PWC trademark is famous in the consulting industry and thus “there seems to be no plausible explanation for Respondent’s registration and use of [pwc-consulting.com], other than a deliberate attempt to trade on Complainant’s mark…”). The Panel is in agreement with Complainant’s well-stated point with regard to fair use, that is, Respondent has not simply expressed views about the Company but rather has attempted to identify itself as the Company.
Previous UDRP panels have held that when a respondent does not respond to a complaint, it can be assumed in appropriate circumstances that this respondent has no rights or legitimate interests in the disputed domain name. See Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269 and AREVA v. St James Robyn Limoges, WIPO Case No. D2010-1017. If Respondent has a right or legitimate interest in the Disputed Domain Name, it surely would have responded to this Complaint.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or a legitimate interest. The Panel accepts that Complainant made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Disputed Domain Name was registered long after — twenty-seven years — the Company began using and promoting its now well-known Trademark in commerce. Respondent’s awareness of Complainant’s mark at the time the Disputed Domain Name was registered (and thus registered in bad faith) is further demonstrated by the fact that Respondent has had the hubris to copy — down to the same pictures and discussion — Complainant’s web site in its entirety and has used that site to misdirect Internet users. See Tia Carrere v. Steven Baxt, Supra. There are a number of previous UDRP decisions dealing with the facts similar to those in this case wherein Respondent has no connection with the product involved which suggests bad faith. See also Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. Respondent’s use of the Disputed Domain Name to divert consumers and redirect them to Respondent’s own web site for its own commercial gain as in this case has been deemed bad faith under paragraph 4(b)(iv) of the Policy. See Wal-Mart Stores, Inc. v Steve Powers, WIPO Case No. D2003-1051. Similarly where a respondent, as in this case, registered a domain name in order to trade off the complainant’s reputation thereby creating a false impression of association between complainant and respondent the panel found bad faith. See Tia Carrere v. Steven Baxt, Supra. Respondent is trading on the goodwill of the Trademark. Complainant has satisfied the third element of the Policy.
While there may be reasons in some situations for the use of “proxy” registration (e.g. WhoisGuard) to protect privacy, the more usual case as in this case is an attempt by a respondent to hide behind the proxy registrant to avoid discovery and at least delay proper justice to the Complainant. The use of such devices must be subject to further policy scrutiny to be certain such device is reasonable in the overall scheme of regulation of registrants and in the view of this Panel should at least require immediate disclosure by any such proxy registrant of the real party in interest upon the filing of a Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <huntoilcorp.com> be transferred to Complainant.
James H. Grossman
Date: December 19, 2012