WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New Era Oil (UK) Limited v. Jaewan Lee
Case No. D2010-1408
1. The Parties
The Complainant is New Era Oil (UK) Limited of London, United Kingdom of Great Britain and Northern Ireland and Essex, United Kingdom, represented by Lawdit Solicitors, United Kingdom.
The Respondent is Jaewan Lee of Gwangju, Seo-Gu, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <neweraoil.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2010. On August 20, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On August 24, 2010, OnlineNic, Inc. d/b/a China-Channel.com 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 August 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2010.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on September 21, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a United Kingdom company trading under the names “New Era Oil” and “New Era Lubricants” over the last 90 years.
The Complainant owns unregistered and registered trademark rights in NEW ERA OIL and NEW ERA LUBRICANT, respectively.
The Respondent registered the disputed domain name <neweraoil.com> on June 24, 2010.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has been trading under the names “New Era Oil” and “New Era Lubricants” over the last 90 years, over which it has built up substantial goodwill.
In that connection, the Complainant contends that it has unregistered trademark rights on NEW ERA OIL and that it owns a United Kingdom trademark registration for NEW ERA LUBRICANTS and design, Registration No. 2,427,328, granted on February 9, 2007.
Moreover, the Complainant contends that it first registered the disputed domain name <neweraoil.com> in 2000, having renewed it subsequently until the Respondent was able to register the disputed domain name on June 24, 2010, on the basis of an administrative error by the Complainant.
Furthermore, the Complainant contends that the disputed domain name <neweraoil.com> is identical to its unregistered trademark NEW ERA OIL and confusingly similar to its registered design trademark NEW ERA LUBRICANTS.
The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. Moreover, it contends that there is no evidence that the Respondent has ever been known by “New era oil” nor that the Respondent operates a business or any other organization under the disputed domain name.
Furthermore, the Complainant also contends that it has not licensed nor authorized the Respondent to use the Complainant’s trademarks NEW ERA OIL and NEW ERA LUBRICANTS.
What is more, the Complainant contends that the disputed domain name is for sale through “www.sedo.com” a well-known online auction site, which would evidence the Respondent’s lack of rights or legitimate interests.
Moreover, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In that connection, the Complainant contends that the Respondent knew or should have known of the Complainant and its trademarks NEW ERA OIL and NEW ERA LUBRICANTS which evidences its bad faith registration.
On the other hand, the Complainant contends that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Finally, the Complainant contends that the website to which the disputed domain name resolves contains pay-per-click links to other online locations offering goods and services related to those offered by the Complainant.
For all the above, the Complainant requests that the dispute domain name <neweraoil.com> be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For the Complaint to succeed in a UDRP proceeding, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
The Complainant alleges that it owns unregistered trademark rights on NEW ERA OIL. Such rights would arise from the use of NEW ERA OIL as a trademark and trade and corporate name of the Complainant.
It has become generally accepted under the Policy that in order to show trademark rights over a name that has not been registered as a trademark, the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction1.
In line with the above, the Panel finds that the Complainant has presented relevant evidence to the Panel’s satisfaction showing that the Complainant has used the name NEW ERA OIL as a trademark identifying the goods and services offered by the Complainant and, therefore, it constitutes an unregistered trademark in which the Complainant has rights in the terms of the Policy.
Moreover, the Complainant has filed relevant evidence showing that it owns a United Kingdom trademark registration for NEW ERA LUBRICANTS. In that connection, the Panel finds that NEW ERA is the most distinctive term in the Complainant's trademark which is entirely incorporated in the disputed domain name <neweraoil.com>.
In view of the foregoing, the Panel finds that the disputed domain name <neweraoil.com> is confusingly similar to trademarks in which the Complainant has rights, and therefore, the Complainant has succeeded on this first element under the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(a)(ii), the second element that the Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in its paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent's lack of rights or legitimate interests in a domain name, the burden of submitting evidence to demonstrate any such rights therefore shifts to the respondent. The respondent must then by concrete evidence demonstrate its rights or legitimate interests in the domain name in order to refute the complainant’s prima facie case.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests and so the responsibility of coming forward with demonstrative evidence has effectively been shifted to the Respondent, who did not reply to the Complainant's contentions and, therefore, has not made such showing.
Furthermore, the Complainant has submitted relevant evidence showing that the Respondent has not made a bona fide offering of goods or services.
The Complainant has presented evidence that the website to which the disputed domain name resolves contains pay-per-click links that redirect Internet users to other online locations offering related services to those offered by the Complainant.
In that connection, the printouts of said website show that, among others, it contains links under the names “Heating Oil” and “Energy”.
Moreover, the Complainant has filed relevant evidence to the Panel’s satisfaction showing that the disputed domain name is for sale through “www.sedo.com”, a well-known online auction site.
In the terms of the Policy, such use in the present circumstances does not appear to be a fair use of the disputed domain name and, therefore, the Panel finds that the Respondent is trying to misleadingly divert consumers to the website to which the disputed domain name resolves. Moreover, the Panel finds that the Respondent is attracting Internet users to its website for commercial gain. Such use cannot be considered a bona fide use, or fair or noncommercial use.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “New era oil” or that it has any right on it. Furthermore, there is no evidence showing that the Respondent operates a business or any other organization under the disputed domain name.
For these reasons, and in the absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant has proved to the Panel's satisfaction that it owns unregistered and registered trademark rights in NEW ERA OIL and NEW ERA LUBRICANT, respectively.
Furthermore, the Complainant has proved to the Panel’s satisfaction that the Complainant is a United Kingdom company which has been trading under the names “New Era Oil” and “New Era Lubricants” over the last 90 years, and that it has used its trademarks long before the Respondent registered the disputed domain name <neweraoil.com> on June 24, 2010.
In view of the foregoing, and in the absence of a rebuttal from the Respondent, the Panel finds that the Respondent was aware or must have been aware of the trademarks NEW ERA OIL and NEW ERA LUBRICANTS before registering the disputed domain name <neweraoil.com>, which evidences bad faith registration.
Moreover, as stated by the Complainant and on the basis of the printouts of the website to which the disputed domain name resolves2, and in the absence of a rebuttal by the Respondent, the Panel finds that by using the disputed 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 trademark as to the source, sponsorship, affiliation, or endorsement of said website.
For these reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case.
7. Decision
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 <neweraoil.com> be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Dated: September 27, 2010
1 S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394.
2 The website contains pay-per-click links that redirect Internet users to other online locations offering inter alia related services to those offered by the Complainant.