World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suncor Energy Inc. v. Whois Privacy Protection Service, Inc. / andre bechamp

Case No. D2012-2123

1. The Parties

Complainant is Suncor Energy Inc. of Calgary, Alberta, Canada, represented internally.

Respondent is Whois Privacy Protection Service, Inc. / andre bechamp of Bellevue, Washington, United States of America and Gatineau, Quebec, Canada, respectively.

2. The Domain Names and Registrar

The disputed domain names <suncorcalgary.com>, <suncorcanadainc.com>, <suncorcareers.com>, <suncorenergycanada.com>, <suncor-energy.com>, <suncorenergyltd.com> and <suncorjobs.com> are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2012. On October 26, 2012, and November 1, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 26, 2012, and November 1, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 5, 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 November 8, 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 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 30, 3012.

The Center appointed Ross Carson as the sole panelist in this matter on December 12, 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

Complainant, an integrated oil and gas company is the second largest in Canada, and the fifth largest energy company in North America with headquarters in Calgary, Alberta, Canada. Complainant has over 13,000 employees as well as 5,000 contractors and has yearly sales in excess of USD 39 billion.

Complainant’s SUNCOR ENERGY Design trademark has been valued at USD 936 million and ranked as 46th in Canada by an independent study conducted by Brand Finance Brandirectory. Complainant ranks number 134 in the most recent Forbes Global 2000 list. Complainant has extensively used its SUNCOR and SUNCOR ENERGY trademarks and the marks are well known in Canada and the United States of America.

Complainant is the registered owner of numerous trademark registrations in Canada and the United States of America for the trademarks SUNCOR, SUNCOR design and SUNCOR ENERGY. The earliest such registration in Canada is Canadian Registration No. TMA255457 for the trademark SUNCOR design registered January 30, 1981 in relation to the goods synthetic crude oil, sulfur. The earliest such registration in the United States of America (U.S.) is United States Registration No. 2305171 for the trademark SUNCOR ENERGY registered January 4, 2000 in relation to goods in International Class 004.

Complainant owns and operates its principal website at “www.suncor.com”, it first registered its <suncor.com> domain name on August 30, 1995. In September of 2012, Complainant’s website had 1,473,570 page views, and 273,446 visits. Over half of these visits were to Complainant’s careers page located at ”www.suncor.com/en/careers/282.aspx”. The disputed domain name <suncorenergycanada.com> was registered on August 29, 2012; <suncorenergyltd.com> on August 30, 2012; <suncorcareers.com> on September 19, 2012; <suncorjobs.com> on September 20, 2012; <suncor-energy.com> on September 19, 2012; <suncorcalgary.com> on September 19, 2012; and <suncorcanadainc.com> on September 19, 2012.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant submits that all of the disputed domain names are identical and confusingly similar to Complainant’s registered SUNCOR and SUNCOR ENERGY trademarks and <www.suncor.com> domain name in which Complainant has rights. The disputed domain names incorporate Complainant’s SUNCOR and/or SUNCOR ENERGY trademarks in their entirety. The incorporation of a trade mark in its entirety in a domain name may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trade mark, see, Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. It was decided by the UDRP panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 that “when a domain name wholly incorporates a complainant’s registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”. Complainant’s SUNCOR trademarks have been registered since as early as 1981. The registration of Complainant’s trademarks substantially predates the registration of the disputed domain names, which were registered in August and September of 2012. Complainant has the exclusive right to use its trademarks in Canada and the U.S., and that right has been infringed by Respondent.

Complainant further submits that the incorporation of a trade mark in its entirety, followed by a common term can also be sufficient to establish that a domain name is identical or confusingly similar to a trade mark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,’ which is a distinctive mark. The mere addition of common terms such as ‘sports’, ‘basketball’, ‘soccer’, ‘volleyball’, ‘rugby’ and the like to the ‘PEPSI’ mark, does not change the overall impression of the designations as being domain names connected to the Complainant”.

Complainant further submits that it has been held that a domain name consisting of the complainant’s trade mark and ending with the “.com” generic Top Level Domain (gTLD) is confusingly similar to the complainant’s trade mark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650.

Complainant submits that the disputed domain names <suncorcalgary.com>, <suncorcanadainc.com> and <suncorenergycanada.com> combine Complainant’s well-known SUNCOR or SUNCOR ENERGY trademarks with the geographical indicators “canada” and “calgary”. The addition of the word “canada” and “calgary” to Complainant’s well-known trademarks is designed to take advantage of Internet users by misleading them into believing that the site is owned and operated by Complainant, particularly because Complainant is headquartered in Calgary, Canada. It has been established in numerous UDRP cases that the addition of a generic or descriptive term (such as a geographical indicator) to an otherwise distinctive or well-known trademark does not serve to distinguish the domain name from a complainant’s trademarks. See the following cases: Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639; and Viacom International Inc. v. Erik Peterson, WIPO Case No. D2001-0346.

Complainant further submits that the disputed domain names <suncorcanadainc.com> and <suncorenergyltd.com> combine Complainant’s well-known SUNCOR trademarks with the generic indicator “ltd” and ‘inc”. It has been established that the addition of generic terms such as “ltd” or “inc” do not change the overall impression of the designations as being domain names connected to a complainant. See, BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, WIPO Case No. D2008-1338.

Complainant states that the disputed domain names <suncorcareers.com> and <suncorjobs.com> combine Complainant’s well-known SUNCOR trademark with the generic indicators “careers” and “jobs”. Complainant’s SUNCOR brand is a distinctive mark, which together with the common usage of the word “careers” or “jobs”, indicate these domain names to relate to career opportunities offered by Complainant. Merely adding the generic word “career” or “jobs”, and the gTLD “.com” at the end, would similarly not be sufficient to create a distinct domain name, and does not distinguish the disputed domain names from Complainant’s trademarks (see Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026.

A.2. No Rights or Legitimate Interests in respect of the disputed domain names

Complainant states that Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names that are the subject of the Complaint. Complainant’s SUNCOR trademark has been used and registered since as early as 1980. Respondent registered the disputed domain names in 2012. Because Complainant’s use of its SUNCOR trademarks predates the registration of the disputed domain names, this constitutes prima facie evidence of the absence of Respondent’s rights or legitimate interests in the disputed domain names and therefore the evidentiary burden shifts to Respondent to rebut the showing by providing evidence of its rights or legitimate interests in the disputed domain names. See, e.g., Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Complainant further states that there is no evidence of Respondent’s use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. The only use made has been to mislead and divert customers and employees, disrupt the business and tarnish the reputation of Complainant.

Complainant submits that Respondent’s use of the websites associated with the disputed domain names to provide information on how to avoid the consequences of testing positive for illegal drugs at Complainant’s facilities is not a legitimate use of the disputed domain names.

Complainant further submits that in order to provide the public with the information on the websites, Respondent does not need to use Complainant’s trademarks as part of the disputed domain names, and there is no legitimate reason to use the disputed domain names other than to tarnish Complainant’s reputation and mislead the public. Since the drug testing information has no connection to the disputed domain names, Respondent has no legitimate interest to use these terms to designate its websites. (See Football Club des Girondins de Bordeaux v. Annie Arr, WIPO Case No. D2000-0149.

Complainant states that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names, and the intent for registering the disputed domain names was to undermine Complainant’s efforts to provide a safe working environment for their employees and contractors by providing information on how to avoid the consequences of testing positive for illegal drugs.

Complainant further states that the websites associated with the disputed domain names provide information on the random drug testing procedures used on employees working in the Alberta oil sands, but do not appear to be criticizing Complainant directly. Some UDRP panels have assessed whether a respondent may have a legitimate interest in using a trademark as part of the domain name of a criticism site by reference to additional considerations. See the following UDRP decisions: Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947; Midland Heart Limited v. Uton Black, WIPO Case No. D2009-0076.

Complainant submits that consideration should be given to whether:

(i) Have the disputed domain names been registered and used genuinely for the purpose of criticizing the trademark owner? Complainant submits that the websites do not criticize Complainant outright, but rather provide information on the drug testing process used for workers in the Alberta oil sands. The purpose appears to be to circumvent the process rather than criticism.

(ii) Does Respondent believes the criticism to be well-founded and lacks intent for commercial gain? Complainant submits that the websites do not appear to be for criticism of Complainant. Further, the “www.suncorjobs.com” website contains an advertisement soliciting visitors of the site to purchase website building services at “www.webs.com”. Respondent is likely paid per click for each visitor they bring to this website.

(iii) Is it immediately apparent to Internet users visiting the websites at the disputed domain names that they are not operated by the owner of the trademark? Complainant submits that it is not apparent from the websites that the disputed domain names are not operated by Complainant. In fact, the banner across the top of the landing pages conveys that they are, this coupled with the corresponding confusing disputed domain names leads to initial confusion by the respective site visitor. Further, Respondent has not indicated anywhere on the websites that the websites are not operated by Complainant. See, MicroFinancial, Inc. v. Glenn Harisson, WIPO Case No. D2003-0396 and Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206. The nature of the content of the websites cannot be derived from the disputed domain names, which clearly shows that Respondent is not making a legitimate noncommercial use of the disputed domain names. Even if Respondent’s websites could be deemed to be legitimate criticism websites, which is disputed by Complainant, this cannot qualify as a right to use Complainant’s SUNCOR trademarks in the disputed domain names (see The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823.

(iv) Has Respondent refrained from registering all or most of the obvious domain names reasonably suitable for the owner of the mark? Complainant submits that Respondent has registered a total of seven obvious domain names reasonably suitable to Complainant. Clearly Respondent did not need to register seven domain names using Complainant’s marks to provide the information contained on the websites. This may prevent or unduly interfere with Complainant’s provision of convenient access to its website. (See Fundación Calvin Ayre Foundation v. Erik Deutsch, WIPO Case No. D2007-1947.)

(v) Where appropriate, has a prominent and appropriate link been attached to Respondent’s websites? Complainant submits that no link to Complainant’s website has been provided on any of the websites associated with the disputed domain names.

(vi) Where there is a likelihood that email intended for a complainant will use the domain name in issue, have senders been alerted in an appropriate way that their emails have been misaddressed? Complainant states that there is no email address listed.

Complainant states that it has not licensed or otherwise permitted Respondent to use its trademarks or to apply to register the disputed domain names, and the use of a domain name which is identical to Complainant’s SUNCOR or SUNCOR ENERGY trademarks is not a bona fide offer of goods or services when Respondent has no registered or common law rights in the marks. See for example Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079.

Complainant further states that there is no evidence that Respondent is commonly known by any of the disputed domain names.

A.3. Registration in Bad Faith

Complainant states that its SUNCOR trademarks have been used so extensively in Canada since 1980 that other persons or entities would not legitimately choose identical or confusingly similar domain names unless they were seeking to create an impression of an association with Complainant. It is inconceivable that Respondent was not aware of Complainant’s well-known marks in 2012 when it registered the disputed domain names or that it is infringing on Complainant’s rights. Respondent’s references to Complainant in the title banner of each of the websites and the reference to “oil sands” and the drug testing process and contractor used by Complainant in the content of each of the websites are evidence of registration in bad faith. See for example Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397.

A.4. Use in Bad Faith

Complainant states that it is the second largest oil and gas company in Canada, and the fifth largest in North America. Complainant was the first company to develop the Canadian oil sands, and oil sands are the focus of Complainant’s business. Oil sands are commonly associated with Complainant.

Complainant further states that the landing pages of all seven of the websites associated with the disputed domain names are virtually identical, expect for the name at the top of each landing page, which corresponds to the name of the disputed domain name, which contain Complainant’s trademark SUNCOR as the distinctive feature.

The first sentence of the first paragraph on the landing page states “you’ve failed the onsite random drug test. What happens to you now?” The second sentence reads “By oil sands standards you are officially a drug addict and need to be treated.” As noted, oil sands are commonly associated with Complainant. By referring to oil sands in the content of the landing pages and using Complainant’s SUNCOR trademark in disputed domain names and the title banner on the websites, Respondent has purposefully attempted to mislead viewers into believing that the websites belong to Complainant.

The content on each of the websites also refer the Random Drug Testing process used by Complainant, and refers to the contractor, Organization Health (along with the correct phone number for the contractor), which is the contractor used by Complainant to provide an assessment in the case of a positive drug test by one of their employees.

Complainant states that Respondent has not indicated on any of the websites that they are not connected to Complainant. The websites contain confidential information used by Complainant, namely, the questions used by Complainant to assess an employee or contractor that have tested positive for illegal drugs. It is clear that the intent of Respondent is to disrupt the business and tarnish the reputation of Complainant by providing information on how to avoid having to receive treatment or repercussions if a test for illegal drug use initiated by Complainant is positive. Not only does this disrupt Complainant’s business, it potentially puts the lives of Complainant’s employees and contractors in danger by making it possible for illegal drug users to continue working for Complainant without detection or proper treatment. Further, it undermines Complainant’s credibility and reputation and is against the best interests of the public.

Complainant further states that when registering the disputed domain names, Respondent knowingly chose seven domain names which contain Complainant’s SUNCOR or SUNCOR ENERGY trademarks and which are similar to the domain name registered by Complainant in the .com gTLD. Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing domain names which consist of Complainant’s trademarks, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties. See, Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020.

Complainant submits that Respondent’s registration of the disputed domain names with full knowledge that the name belonged to Complainant and Respondent’s subsequent use of the websites to publish confidential information so as to circumvent Complainant’s drug testing processes has tarnished Complainant’s mark and is strong evidence of bad faith. See, DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 and Etam, plc v. Alberta Hot Rods, WIPO Case No. D2000-1654.

Complainant further submits that the intent of Respondent clearly is not parody or criticism, but rather to circumvent Complainant’s drug testing program. Complainant, its employees and contractors, as well as other oil sand works and contractors are likely to suffer harm as a consequence of Respondent’s use of the disputed domain names.

Complainant states that use in bad faith may be found where the registrant tarnishes the trademark of Complainant by associating Complainant’s trademark with Respondent’s misleading or unsavory activities. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; America Online, Inc. v. Connect at 50 Plus, WIPO Case No. D2000-0978 and National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

Complainant states that the “www.suncorcareers.com” and “www.suncorjobs.com” websites suggest from their names that they offer job postings for Complainant. However these sites do not offer any job postings. This further suggests that there is no legitimate use and that these disputed domain names are intended to mislead. Further, as noted, Complainant has over 13,000 employees and 5,000 contractors. Complainant, at or about the time of the filing of the Complaint, advertised165 positions on their career page located at “www.suncor.com/en/careers/4962.aspx.” In September of 2012, Complainant’s website had 1,473,570 page views, and 273,446 visits. Over half of these visits were to Complainant’s careers page. The use of the words “careers” and “jobs” in these disputed domain names indicates that Respondent is targeting those working for or looking for job opportunities with Complainant.

Complainant further submits that Respondent’s use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is consistent with an inference of bad faith in registering and using disputed domain names, particularly when there is other evidence of evasiveness and irresponsible conduct. Respondent’s knowledge of the specific procedure and questions used in Complainant’s drug testing procedures indicates that Respondent is likely a disgruntled employee or contractor who wishes to encourage Complainant’s employees to continue illegal drug use and to continue their illegal and irresponsible activities. Respondent has likely used the proxy registration to avoid being held accountable by Complainant for their actions. See, Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696. Proxy registration can be abused by cybersquatters, as the panel concluded in Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311 (finding bad faith on the part of the proxy service provider as well as by the real party in interest): “finally the Panel cannot disregard the fact that, since the kind of service offered by the Registrar and the Respondent, which allows registrants to obtain domain names with anonymous contact information, encourages Cybersquatting, the Respondent, being informed of a trademark violation, should use best endeavours to support the UDRP system and the injured trademark owners.”

Complainant further states that on October 15, 2012, it sent cease and desist letters to the email addresses provided for each of the disputed domain names. To date, Complainant has not received a response to its letters.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of numerous trademark registrations for the trademarks SUNCOR and SUNCOR ENERGY some of which are recited in Section 4 above. Complainant’s registered trademarks were registered and extensively promoted and used in Canada and the United States of America for many years prior to the date of registration of the disputed domain names in August and September of 2012.

The disputed domain names <suncorcalgary.com>, <suncorcanadainc.com>, <suncorcareers.com>, <suncorenergycanada.com>, <suncor-energy.com>, <suncorenergyltd.com> and <suncorjobs.com>, incorporate the entirety of Complainant’s trademarks SUNCOR or SUNCOR ENERGY. Many UDRP panels have found that domain names are confusingly similar to trademarks when the disputed domain name incorporates the trademark in its entirety. See, Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201. It was decided by the UDRP panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr. WIPO Case No. D2000-1525 that “when a domain name wholly incorporates a complainant’s registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.

The addition of geographical, generic and descriptive terms “Calgary”, “Canada”, “Inc.”, “careers”, “Ltd” or “jobs”, to Complainant’s distinctive trademarks SUNCOR or SUNCOR ENERGY in the disputed domain names does not, under the circumstances, avoid a finding of confusing similarity. Numerous UDRP panels have found that domain names comprised of a well-known trademark as the distinctive element in conjunction with descriptive or generic terms are confusingly similar to a registered trademark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,' which is a distinctive mark. The mere addition of common terms such as ‘sports', ‘basketball', ‘soccer', ‘volleyball', ‘rugby' and the like to the ‘PEPSI' mark, does not change the overall impression of the designations as being domain names connected to the Complainant”.

The fact that the disputed domain names include the location “Calgary” and “Canada” reinforces to the Panel the association of those disputed domain names with Complainant’s trademarks SUNCOR and SUNCOR ENERGY as Complainant’s head office is located in Calgary, Alberta, Canada. See, Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071 (“Moreover, the addition in the disputed domain name of the term ‘crystal’ only reinforces the association of the disputed domain name with Complainant’s mark, because Complainant is a well-known manufacturer of crystals”).

The use of a hyphens in the disputed domain name <suncor-energy.com> is typically irrelevant in a finding of confusing similarity. Several UDRP panels have held that the use of a hyphen in a domain name is insignificant and does little to avoid confusing similarity with a well-known trademark. See, e.g., Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630 (“It is well established in decisions under the UDRP that the presence or absence of characters (e.g., hyphens, dots) in a domain name […] are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name”);

The inclusion of the gTLD “.com” in the disputed domain names does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that each of the disputed domain names <suncorcalgary.com>, <suncorcanadainc.com>, <suncorcareers.com>, <suncorenergycanada.com>, <suncor-energy.com>, <suncorenergyltd.com> and <suncorjobs.com> is confusingly similar to Complainant’s trademarks SUNCOR and SUNCOR ENERGY.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s trademarks SUNCOR or SUNCOR ENERGY.

Complainant has been using its SUNCOR and SUNCOR ENERGY trademarks for over a decade to promote its goods and services in Canada and the U.S. Respondent appears to have registered or acquired the disputed domain names in August and September of 2012 when Complainant’s trademarks were well known in Canada and the U.S. Previous UDRP panels have found that in the absence of any license or permission from a complainant to use well-known trademarks, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com, Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138.

There is no evidence that Respondent has ever been known by or used the trademarks SUNCOR or SUNCOR ENERGY in association with its own goods or services. Respondent has used the disputed domain names incorporating Complainant’s SUNCOR or SUCOR ENERGY trademarks in association with websites that that resolve to webpages relating to random drug testing and more particularly how to interfere with the assessment procedures which follow failure of Complainant’s drug test. The Panel finds that rights or legitimate interests in confusingly similar domain names cannot be created where the websites are intended to interfere with Complainant’s obligation to maintain a safe work environment. UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See also, Drexel University v. David Brouda, WIPO Case No. D2001-0067.

Complainant submits that Respondent has not used the websites associated with the disputed domain names genuinely for the purpose of criticizing Complainant’s drug testing program outright but rather to provide information to Internet users, should the Internet user be an oil sands worker, on how to circumvent oil sands drug testing program.

Each of the disputed domain names <suncorenergycanada.com>, <suncorenergyltd.com>, <suncorjobs.com> and <suncorcareers.com> resolve to their own respective websites. The disputed domain names <suncorcalgary.com>, <suncorcanadainc.com> and <suncor-energy.com> are redirected to the website associated with the disputed domain name <suncorenergycanada.com>. The banner atop each of the landing pages features the words “Suncor Energy Canada”, “Suncor Energy Ltd”, “Suncor Careers” or “Suncor Jobs” corresponding to respective disputed domain names creating the initial impression that the website is Complainant’s website. The landing page associated with the disputed domain name <suncorenergycanada.com> includes a sub-title “Suncor Energy Canada” in smaller print. The landing page associated with the disputed domain name <suncorenergyltd.com> is identical to the heading for <suncorenergycanada.com> except for the subtitle which reads “Suncor Drug Testing”. The landing page associated with the disputed domain name <suncorcareers.com> is identical to the heading for the landing page <suncorenergycanada.com> except for the subtitle which reads “Suncor Careers”. The landing page associated with the disputed domain name <suncorjobs.com> is identical to the heading for <suncorenergycanada.com> except for the subtitle which reads “Suncor Jobs”.

Below the banner of each webpage, side by side, are the headings “RSAP Drug Testing” and “Interview Questions”. Complainant refers to these two headings as part of a navigation bar. The Panel has been unable to navigate to any of the websites associated with the disputed domain names as the websites appear to be down at the time of this Decision. Neither, Complainant or Respondent have explained the meaning of the acronym RSAP. The Panel searched Google to obtain information on the acronym RSAP. The acronym RSAP is short for Rapid Site Access Program. As best understood by the Panel RSAP is a service provided by independent third parties to assess persons who have tested positive in a drug test, decide on a course of action, hear appeals and arrange for treatment and follow up. Complainant and other plant operators use contractors having specialized skills who must have access to their plant. The employees of the contractors must be screened before gaining access to the plant. If contractors’ employees are not prescreened there may be a delay in gaining access to a plant. In so far as it relates to employees of contractors RSAP is a voluntary program that is an alternative to site access testing. It is not imposed by owners or contractors. Workers qualify for the program and enter into an agreement with the third party case administrator. As part of the agreement, workers agree to be subject to random testing while on work time. The content of the websites associated with the disputed domain names refer to Organizational Health Incorporated, a third party used by Complainant to provide an assessment in the case of a positive drug test by one of its employees or the employee of a contractor.

Complainant contends that the webpages associated with the disputed domain names provide information on the random drug testing procedures used for workers in the oil sands, but do not appear to criticize Complainant directly. However the content of the webpages identifies and provides the phone number of the third party company retained by Complainant to conduct the assessment of workers who have failed random drug tests at the workplace. Further Respondent’s webpages include a “Navbar” link to “Interview Questions” utilized by Complainant’s third party assessment entity. The Panel concludes that the content of the material combined with the use of the confusingly similar domain names provides a connection between the webpages and Complainant.

The content of the webpages may be considered critical of the RSAP random drug testing process. Under the heading: “The Truth About RSAP”, Respondent states that the RSAP was originally designed to randomly test oil sands workers who are under the influence of drugs or alcohol at work. Respondent states that the RSAP is not random at all and the main focus is to test oil sands workers who have taken drugs on their own personal time on their first day back from their vacations, turn arounds and weekends off.

Complainant contends that the actual intent of the websites is to interfere with its efforts to provide a safe working environment for their employees and contractors by providing information on how to avoid the consequences of testing positive for illegal drugs. A review of the content of the webpages discloses that Respondent’s webpages advise that employees or contractors’ employees should not volunteer for the RSAP program if they use any drug on their time off that will show up on their drug screen or take prescription painkillers unknown to their employer, for knee, neck, or back pain. The bulk of the content of the website is directed to the assessment process which follows or will in future follow upon failure of the RSAP drug test.

Complainant has attached as part of the Annexes to the Complaint screenshots of each of the websites, which feature a page entitled “Interview Questions” which appears to have been downloaded from the Navbar heading “Introductory Questions” found on each of the webpages. The introductory line under “Introductory Questions” reads: “When you go for the initial assessment the psychologist will ask the following questions”. The introductory line is followed by a page of questions.

The theme of the webpages is to inform workers about the assessment and how to partially inform or misinform the psychologist conducting the assessment about drugs. The webpages inform the worker that: “There is NOTHING you like about drugs or taking drugs. Memorize a list of dislikes, physical side effects and allergic reactions from alcohol, marijuana or whatever drug you admit to using in your past before going to the interview.” The webpages include a list of 10 items under the heading: “What Not To Do At The Interview”. For example: “DO NOT – admit to ANY regular drug use recently or in your past for any length of time or ever doing drugs alone”.

The Panel finds that the overriding purpose of the content of the webpages is to interfere with proper assessment of employees or contractors of Complainant who have failed a drug test by the third party retained by Complainant to assess such employees prior to treatment. Criticism of the RSAP random drug testing procedure is secondary to the above noted overriding purpose of the webpages.

When registering the disputed domain names, Respondent knowingly chose seven domain names which contain Complainant’s SUNCOR or SUNCOR ENERGY trademarks as the distinctive element. The content of the websites associated with the disputed domain names is RSAP drug testing which is used by numerous employers and contractors. More particularly the content of the webpages is related to the assessment protocol. Respondent could have chosen a domain name descriptive of the content of its site which would have attracted a targeted audience of workers or contractors having RSAP agreements. By failing to do so, and by knowingly choosing domain names which consist of Complainant’s trademarks as the distinctive element, Respondent has intentionally created a situation which is at odds with Complainant’s legal obligations. See, Compagnie de Saint Gobain v. Com-Union Corp, WIPO Case No. D2000-0020, where the panel found: “Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which soley consists of Complainant’s trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties”.

The disputed domain names <suncorjobs.com> and <suncorcareers.com> will attract Internet users seeking employment with Complainant. There is no prominent and appropriate link provided to Complainant’s website. This is a further criteria to consider in determining if a respondent is operating a genuine criticism website. See, Midland Heart Limited v. Uton Black, WIPO Case No. D2009-0076.

Respondent has registered seven disputed domain names suitable for use by Complainant. This is a further criteria to consider in determining if Respondent had a right or legitimate interest for purposes of the UDRP. See, Midland Heart Limited, supra.

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, and Respondent is not using the disputed domain names for a permissible criticism site. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.4.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous UDRP panels have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy or otherwise. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

Respondent’s use of a proxy registration service to avoid disclosing the name and coordinates of the real party in interest is consistent with an inference of bad faith in registering and using disputed domain names, particularly when there is other evidence of advice to employees or contractors who have failed drug tests on how to be evasive in responding to psychologists during assessment interviews. Respondent’s knowledge of the specific procedure and questions used in Complainant’s drug testing procedures indicates that Respondent has acquired what is normally and likely confidential information. Respondent has likely used the proxy registration to avoid being held accountable by Complainant for their actions. See, Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696. The fact that Respondent did not respond to Complainant’s cease and desist letter and has apparently shut down the websites associated with the disputed domain names, after the filing of the Complaint, is also consistent with an inference of bad faith.

Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and are being used in bad faith.

When the disputed domain names were created in August and September of 2012, Complainant’s SUNCOR and SUNCOR ENERGY trademarks had been registered in Canada and the United States of America for over a decade in relation to synthetic crude oil and were well-known trademarks throughout Canada and the United States of America prior to registration of the disputed domain names.

Respondent’s references to Complainant in the banner atop each of each of the websites and the reference to “oil sands” and the drug testing process and contractor used by Complainant in the content of each of the websites are evidence of knowledge of Complainant, its well-known trademarks and its operations prior to registration of the disputed domain names. Further for the reasons expressed in Section 6.B immediately above, the Panel finds that Respondent registered the confusingly similar disputed domain names to interfere with Complainant’s obligation to operate a safe workplace.

The Panel thus finds on a balance of probabilities, under the circumstances that Respondent registered and used the disputed domain names in bad faith.

The findings of the Panel are limited to the unique circumstances of this case and the three issues set out in paragraph 4(a) of the Policy and do not constitute approval or disagreement with the RSAP drug testing procedure or the assessment process carried on by the third party retained by Complainant to carry out the assessment.

7. Decision

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 names <suncorcalgary.com>, <suncorcanadainc.com>, <suncorcareers.com>, <suncorenergycanada.com>, <suncor-energy.com>, <suncorenergyltd.com> and <suncorjobs.com> be transferred to Complainant.

Ross Carson
Sole Panelist
Date: December 27, 2012

 

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