WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Schlumberger Limited and Schlumberger Asia Services Private Limited v. Yemin Dong
Case No. DCO2011-0027
1. The Parties
The Complainants are Schlumberger Limited of New York, the United States of America and Schlumberger Asia Services Limited of Haryana, India, represented by Scriboard Advocates & Legal Consultants, India.
The Respondent is Yemin Dong of Woodlands, Singapore, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <schlumberger.co> (the “Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 15, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On April 17, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on May 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2011. The Response was filed with the Center on May 19, 2011.
On May 23, 2011, the Complainants filed an unsolicited supplemental submission.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 26, 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.
4. Factual Background
The Complainant Schlumberger Limited, founded in 1926, supplies products and services to customers working in the oil and gas industry. It presently operates in approximately 80 countries. It is the registered proprietor in numerous countries of the trademark SCHLUMBERGER, including in Singapore, No. 4863/89, registered on July 31, 1989.
There is no evidence before the Panel that Schlumberger Asia Services Limited has any rights in the SCHLUMBERGER trademark. Accordingly the Panel pays no regard to its presence on the record as a co-Complainant and refers hereafter to Schlumberger Limited as the Complainant.
The Domain Name was registered on October 10, 2010. It resolves to a parking page provided free of charge by GoDaddy.com, Inc., featuring sponsored advertising links, predominantly to oil and gas industry related websites.
5. Parties’ Contentions
The Complainant says the Domain Name is confusingly similar to its famous and distinctive SCHLUMBERGER mark and that the Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered in bad faith.
As to legitimacy, the Complainant says the Respondent has no rights in any trade mark corresponding to the Domain Name and no connection with the Complainant or any company licensed by it. He is not commonly known by the Domain Name nor by the trademark and is not licensed or otherwise permitted to use the SCHLUMBERGER mark nor to apply for, register, hold or use any domain name incorporating that mark.
As to bad faith, the Complainant says it is inconceivable that the registration of the Domain Name was made without full knowledge of the existence of the Complainant and its trademark[s]. The Complainant's distinctive SCHLUMBERGER trademark is globally well-known, having been used continuously and heavily publicized since 1926.
At present, the Domain Name is being held by the Respondent. This is in bad faith and a clear attempt to take advantage of the Complainant’s goodwill and reputation by the use of a simple domain name extension variant. The mark is understood and associated by consumers in India [sic] as well as abroad as the mark of the Complainant denoting its goods, services and business. Any incorporation of the said mark in a domain name is bound to be in bad faith. The Respondent clearly knew of the Complainant’s prior rights when registering the Domain Name. This by itself constitutes bad faith.
More specifically customers would be induced to believe that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation with the Complainant; that the Respondent is carrying on activities that have been endorsed by the Complainant; and the services offered by the Respondent are at the same level of quality and reliability as those offered by the Complainant and its group companies.
In light of the Respondent's presumed knowledge of the Complainant's rights, it is reasonable to infer that the Respondent could not have registered the Domain Name without intent to target these rights in some manner. It would be extremely difficult, if not impossible, for the Respondent to use the Domain Name in a commercially useful way without violating the Complainant's rights. Thus, the Domain Name was registered in bad faith either to extract money from the Complainant or to transfer or sell the Domain Name to a competitor of the Complainant who could damage the Complainant’s goodwill and reputation by inserting material prejudicial to the Complainant.
The Respondent accepts that the Complainant holds SCHLUMBERGER trademarks in many countries but says the Domain Name is not identical to that trademark, since it is distinguished by the “.co” suffix. Country code top level domains (“ccTLDs”) are assigned to different countries by ICANN. Some ccTLDs are similar to each other or similar to gTLDs. For example, “.ec” and “.cc” are similar; “.co”, “.cm” as well as “.om” are similar to “.com”. But this does not mean that all these similar domain name suffixes are confusing. They are not identical and can be distinguished from each other. Therefore, based on the natural difference between different ccTLDs and/or gTLDs, the Respondent has no intention to engage in cybersquatting or trade mark infringement.
Other companies have registered the SCHLUMBERGER trade mark, in different classes. The Respondent searched the Singapore trade mark database and found that an Austrian wine company holds the SCHLUMBERGER trade mark in class 33. The Complainant holds the SCHLUMBERGER trade mark only in classes 1,6,7,9,12,13,16 out of the total of 45 classes. In the United States trademark database three companies besides the Complainant hold SCHLUMBERGER trademarks, namely the famous jewellery company Tiffany & Co.; Domaines Schlumberger, a French wine company; and Schlumberger Wein, an Austrian wine company. Hence there are several different companies in the world which own trade marks identical or related to SCHLUMBERGER.
The Respondent acknowledges that the Complainant is a famous company in the oilfield industry but says it is not well known to common people in other fields since this is a special industry, far away from common life. Chinese people are not familiar with the Complainant’s company or its SCHLUMBERGER trade mark. It is likewise hard for American or European people to know famous Chinese steel & iron companies, for example Hebei Iron & Steel Group, listed as no. 314 in the Fortune top 500 companies in 2010 (higher than the Complainant’s company) even though they are Fortune top 500 companies. Thus it is not correct to assume that the “Schlumberger” from oilfields is well-known to Chinese people.
Actually, the Respondent knew the Schlumberger name from some famous persons with the surname Schlumberger, for example the designer at Tiffany and the Schlumberger family famous for wine brands. SCHLUMBERGER wine brands are more familiar to Chinese people than the oilfield one. Of these wine companies, the Austrian company holds the Singapore SCHLUMBERGER trade mark and uses the domain name <schlumberger.at> for its website. Another wine company from Germany uses the domain name <schlumberger.de> for its website. In addition, the domain name <schlumberger.co.uk> was owned by a shoe company from the United Kingdom of Great Britain and Northern Ireland. Therefore, different companies or individuals can use domain names with “schlumberger” as the prefix as well as different ccTLD suffixes. Just because the Complainant holds a SCHLUMBERGER trademark does not mean that all SCHLUMBERGER related domain names (including the Domain Name) infringe the Complainant’s trademark.
The Respondent asserts that he has rights in respect of the Domain Name. The purpose of the Domain Name registered by the Respondent is to setup a blog website. The Respondent has no business interest or special purpose to infringe or damage the Complainant’s trademark or reputation. The website for the Domain Name is under construction.
The Respondent denies registering and using the Domain Name in bad faith. As to registration, he says the Domain Name is not identical to the Complainant’s trade mark and can be distinguished by the “.co” suffix; that the Complainant is not well-known to Chinese people since the oilfield industry is special and far from the media attention of common Chinese people including the Respondent. Besides the Complainant, other companies own the identical or similar trademarks in different countries. Therefore, the Respondent did not attempt to take advantage of the Complainant’s trademark. Some domain names, for example <schlumberger.at>, <schlumberger.de> and <schlumberger.co.uk> are held by different companies. If the Respondent did not register and is not using the Domain Name in bad faith, the Respondent is entitled to hold it.
As to use, the Respondent says the Complainant has not provided any evidence that the Respondent is using the Domain Name.
The Respondent specifically denies acting in any of the ways described in the Policy, paragraph 4(b), saying the website for the Domain Name is presently under construction.
In summary, the Respondent denies registration and use (especially use) in bad faith and says the Complainant has not provided any clear and convincing evidence to demonstrate that the Domain Name is being used in bad faith as required by the Policy, paragraph 4(a)(iii).
C. Complainant’s Supplementary Submission
Rules, paragraph 12 provides that the Panel may in its sole discretion request further statements or documents from either of the parties. Thus, no party has the right to insist upon the admissibility of additional evidence: SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092. It is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802. The Response did contain assertions by the Respondent that the Complainant could not reasonably have anticipated. The Panel has decided to admit the Supplementary Submission only to the extent that it responds to these matters.
The Complainant says the wine business in question is owned by and belongs to the same Schlumberger family that owns Schlumberger Limited and Schlumberger Asia Services Private Limited. It is inconceivable that the Respondent did not know about the Complainant’s SCHLUMBERGER trademark, but registered the Domain Name having in mind the Schlumberger family, wine business and jewellery stores, since this in itself is evidence of trademark infringement and bad faith.
The Respondent claims to run a blog website at the Domain Name address without having trademark rights of any kind in the name. To add to this, there is no clarity over the business of the Respondent and as to why the Domain Name is the most appropriate for his business.
Passive holding does not prevent a finding of bad faith. The concept of passive holding may apply even in the event of mere "parking" by a third party of a domain name irrespective of the generation of incidental revenue from advertising referrals.
The domain name <schlumberger.co.uk> is presently residing with Shores Limited, a domain name sale agency and is for sale. It does not rest with a shoe company in the United Kingdom.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
These elements are discussed below.
A. Identical or Confusingly Similar
The Complainant Schlumberger Limited has established that it is the registered proprietor of numerous SCHLUMBERGER trademarks, including in Singapore, where the Respondent is domiciled. The Respondent accepts that the Complainant holds SCHLUMBERGER trademarks in many countries.
The Respondent relies on the specific country code top level of the Domain Name “.co” as distinguishing the Domain Name from the SCHLUMBERGER trademark. However it has been long established that, for the purposes of the Policy, the top level domain is irrelevant and to be ignored for the purpose of determining whether a disputed domain name is identical or confusingly similar to a trademark: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, disregarding as irrelevant the ccTLD “.co”, the Panel finds the Domain Name to be identical and hence confusingly similar to the SCHLUMBERGER trademark.
The Complainant has established this element.
B. Rights or Legitimate Interests
The Panel finds that the SCHLUMBERGER mark is distinctive and well known. The Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of the Respondent. The burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that domain name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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 the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
There is no evidence indicating that the Respondent has been commonly known by the Domain Name.
Although even perfunctory preparations have been held to suffice for the purpose of paragraph 4(c)(i) of the Policy: Shirmax Retail Ltd. v. Ces Marketing Group, Inc., eResolution Case No. AF-0104; Lumena s-ka so.o. v. Express Ventures LTD (www. Skarbiec.com), NAF Claim No. 94375 and Royal Bank of Canada v. Xross, eResolution Case No.AF-0133, the Respondent has provided no evidence of any preparations to use the Domain Name for a blog website, as claimed. The Respondent offers no explanation for the use of the Domain Name to resolve to the “parking page”.
The way in which “parking pages” operate was explained as follows by the learned Panelist in Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364:
“So far as “domain name parking is concerned”, it is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA, WIPO Case No. D2007-1143).
“It is possible for use of a domain name for advertising purposes, whether through a parking site with advertising revenue generating sponsored links or otherwise, to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party’s rights and reputation in that term, then it may have a legitimate interest in the domain name ... On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another’s mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).”
Given the distinctive character of the Schlumberger name, whether in association with jewellery, wine or the oil and gas industry, the Panel is not persuaded that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services nor that he is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert customers or to tarnish the trademark or service mark at issue.
Accordingly the Panel finds that the Respondent has not demonstrated any rights or legitimate interests in the Domain Name. The Complainant has established this element.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.,
(i) circumstances indicating that the respondent has registered or acquired 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 of that complainant, for valuable consideration in excess of the respondent’s documented 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 a corresponding domain name, provided that 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 or service on its website or location.
The Respondent acknowledges that the Complainant is a famous company in the oilfield industry but claims not to have known this at the time of the Domain Name registration. He says he knew the Schlumberger name from some well-known persons with the surname Schlumberger associated with wine and jewellery. In the absence of any evidence from the Respondent to support his claimed intention to create a blog and in the absence of any explanation of his choice of the word Schlumberger, and in light of his attempts to rely on the inconsequential ccTLD as distinguishing the Domain Name from the trademark, the Respondent’s explanation amounts to saying he did not seek to trade off the Complainant’s name because he sought to trade off the name of someone else with the same name. The Panel is prepared to infer that the Respondent did indeed have the Complainant and its mark in mind when he registered the Domain Name, and that he did so in order to trade off the Complainant’s mark. This amounts to registration in bad faith.
This is not a case of “passive use”, since the Domain Name resolves to a website promoting sponsored links to other websites associated with the oil and gas industry. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 3.8:
“[..]. a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an "automatically" generated basis. To the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks. It may not be necessary for the registrant itself to have profited directly under such arrangement in order to establish bad faith use under paragraph 4(b)(iv) of the UDRP. It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.”
Here the Respondent has not shown that he made any attempt toward preventing the inclusion on the parking page to which the Domain Name resolves of advertising or links which profit from trading on third-party trademarks. Since the links on that parking page are predominantly related to the oil and gas industry, any revenue thereby generated (whether or not to the personal benefit of the Respondent) is the result of trading off the goodwill of the Complainant’s trademark.
The Panel finds that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his “parking page” website, by creating a likelihood of confusion with the Complainant’s SCHLUMBERGER mark as to the affiliation or endorsement of the Respondent’s website or of a product or service advertised on his website. Pursuant to the Policy, paragraph 4(b)(iv), this is evidence of both bad faith registration and bad faith use.
The Complainant has established this element.
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 <schlumberger.co> be transferred to the Complainant Schlumberger Limited.
Alan L. Limbury
Dated: June 2, 2011