WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saudi Arabian Oil Company v. Name Redacted
Case No. D2013-0105
1. The Parties
The Complainant is Saudi Arabian Oil Company of Dhahran, Kingdom of Saudi Arabia, represented by Abelman, Frayne & Schwab, United States of America (“US”).
The Respondent is Name Redacted of Sprang-Capelle, the Netherlands, represented by R.H.J.M. Silvertand, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <aramcos.net> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2013. On January 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar also stated that the language of the registration agreement is Dutch.
On January 21, 2013, the Center informed the Complainant that the language of the registration agreement is Dutch, and requested the Complainant to: (1) provide evidence of an agreement between the Complainant and the Respondent that the proceedings should be in English; or (2) submit the Complaint translated into Dutch; or (3) submit a request for English to be the language of the proceedings. On January 24, 2013, counsel for the Complainant submitted a request that the language of the proceeding be English and filed an amendment to the Complaint. The Respondent did not provide any comments in this regard.
The Center verified that the Complaint together with the amendment to 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 January 31, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2013. On February 7, 2013, the Respondent’s representative requested the Center to forward him the Complaint and Annexes. The Response was filed with the Center on February 18, 2013 in English.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on March 5, 2013. 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 the state-owned oil company of the Kingdom of Saudi Arabia (“Saudi Arabia”), a company of limited liability created by Royal Decree according to the laws of Saudi Arabia. The Complainant's predecessor company was founded in 1933 and it was formally created in its current state in 1988. The Complainant has operations in exploration, production, refining, petrochemicals, marketing and international shipping. The Complainant ranks first among oil companies worldwide in terms of crude oil production and exports, and natural gas liquids exports, and is among the leading producers of natural gas.
The Complainant is the owner of numerous registered trademarks worldwide for the word mark ARAMCO and has provided a comprehensive list of these, together with fuller details in a representative sample, including Bahrain trademark number 28968 registered on December 19, 2000 in international class 4.
The disputed domain name was created on November 14, 2012. Shortly after the disputed domain name's creation, individuals and companies began to receive email solicitations from the operator of the disputed domain name purporting to have been sent by the Complainant and stating that the Complainant was interested in a joint venture partnership in real estate and commercial development.
Following notification of the Complaint, the Respondent's representative made contact with the Center on several occasions stating that the Respondent denied registering the disputed domain name and asserting that the Respondent has been the victim of identity fraud. The Respondent's representative subsequently filed a formal Response in which more details were provided of the alleged identity fraud and the steps taken by the Respondent following the existence of the disputed domain name becoming known to the Respondent.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant states that the first and dominant element of the disputed domain name incorporates the trademark ARAMCO in its entirety, and the second element of the disputed domain name incorporates the letter "s". The Complainant asserts that the presence of the top level domain ".net" suffix is irrelevant in the comparison of a domain name to a trademark. The Complainant submits that the addition of the letter "s" in the disputed domain name does not serve to distinguish the disputed domain name from the Complainant's ARAMCO trademark. The Complainant states that this is because the Complainant's trademark appears at the beginning and as the dominant element of the disputed domain name and because the said trademark is so well-known to consumers that consumers will assume that a domain name containing the ARAMCO trademark is that of or associated with the Complainant.
The Complainant submits that its ARAMCO trademark has no meaning in English other than in relation to the Complainant's goods and services, and that as such the disputed domain name is calculated to confuse or deceive, as it falsely suggests that any services provided thereunder are those of the Complainant.
The Complainant states that the Respondent has not received from the Complainant any license or consent, express or implied, to use the Complainant's ARAMCO trademark in a domain name or in any other manner, nor has the Complainant acquiesced in any way to such use or application of its said trademark. The Complainant submits that at no time did the Respondent have authorization from the Complainant to register the disputed domain name and that, to the best of the Complainant's knowledge, the Respondent has no legitimate right or interest in the disputed domain name.
The Complainant asserts on information and belief that prior to the registration of the disputed domain name, the Respondent did not use ARAMCOS or any other marks containing ARAMCOS as a trademark, company name, business or trade name, nor is the Respondent otherwise commonly known in reference to ARAMCOS.
The Complainant further asserts that prior to filing this Complaint, the disputed domain name was used by the Respondent in an attempt to pass itself off as the Complainant. The Complainant notes that the email address which is connected to the disputed domain name has been used to produce business solicitations claiming to be from the Complainant (evidence provided). The Complainant states that it may be inferred that the Respondent's purpose for purchasing the disputed domain name was to carry out a scam and make money by portraying to be the Complainant. The Complainant submits that this use cannot constitute use in connection with a bona fide offering of goods and services or otherwise be considered a legitimate interest in a disputed domain name. The Complainant further asserts that it may be inferred that the Respondent has deliberately attempted to deceive visitors by portraying to be the Complainant and that this gives rise to the presumption that the Respondent does not have any legitimate right or interest in the disputed domain name.
The Complainant states that by the time the Respondent registered the disputed domain name on November 14, 2012 the Complainant's ARAMCO trademark was well-known among the oil and energy industry and consumers throughout the world and that it may be inferred that at that time the Respondent was aware of the Complainants' trademark rights.
The Complainant asserts that the Respondent is likely to have had constructive notice as to the existence of the Complainant's trademark at the time the Respondent registered the disputed domain name and that such constructive notice suggests that the Respondent acted with opportunistic bad faith in registering the disputed domain name. The Complainant contends on information and belief that in using the disputed domain name, the Respondent has intentionally attempted to create a false association, sponsorship or endorsement with or of the Complainant, contrary to paragraph 4(b)(iv) of the Policy. The Complainant refers to previous cases under the Policy indicating that the registration of a domain name containing well-known trademarks by a person with no connection to that trademark amounts to "opportunistic bad faith".
In addition to informal communications with the Center mentioned above, the Respondent filed a formal Response in which it made the following contentions.
The Respondent states that it did not register the disputed domain name, nor has it ordered or requested a third party to do so. The Respondent contends that it has not entered a registration agreement concerning the disputed domain name. The Respondent notes that it has not used the disputed domain name and is unable to use it because the Respondent has no log in code.
The Respondent states that it is the victim of identity fraud. The Respondent notes that it is not the owner of the contact email address for the disputed domain name and that it cannot read or write emails received or sent to that address. The Respondent submits that it does not live at the address stated on the WhoIs record for the disputed domain name but that this is the address of the Respondent's company since 1966 while the telephone number supplied on the WhoIs record for the disputed domain name is the Respondent's company's fax number.
The Respondent states that it has informed various parties of the alleged identity fraud including the reseller and Registrar of the disputed domain name. The Respondent notes that it has made a complaint to the InterNIC WhoIs Data Problem Reports System in respect of the allegedly incorrect information on the WhoIs of the disputed domain name. The Respondent states that it has made a police report and that an investigation has commenced (evidence provided).
The Respondent notes that the registration service provider (“RSP”) in respect of the disputed domain name was contacted on February 16, 2013 by the operator of the disputed domain name and that the said RSP requested the said operator to provide proof of identity. The Respondent states that the operator of the disputed domain name produced a copy passport to the RSP which was not genuine and states “specimen”. The Respondent notes that the photograph in the said passport is not of the Respondent, nor is any other data thereon genuine apart from the surname.
The Respondent notes that it has no intention to infringe any interests of the Complainant and that the Respondent has never attempted to obtain a right or legitimate interest in respect of the disputed domain name. The Respondent notes that it had no intention to carry out any of the bad faith activities alleged by the Complainant to have been carried out in respect of the disputed domain name and has not engaged in any such activities.
6. Discussion and Findings
A. Preliminary Matter – Identity of the Respondent and redaction of the Respondent's name
Although the person identified by name and address in the WhoIs for the disputed domain name (described in this Decision as “the Respondent”) has filed a formal Response in these proceedings, the Panel finds that the circumstances on the record indicate that this person is not the proper Respondent in this case. The Respondent did not register the disputed domain name, has made no contract with the Registrar of the disputed domain name, did not agree to be subject to the Policy in respect of the disputed domain name and in all of these circumstances does not come within the ambit of the Policy. The Panel’s view is therefore that the Respondent does not have standing to request that the Complaint be denied, as it has done in the Response. This does not mean however that the Panel has disregarded all aspects of the Response. On the contrary, the Panel has carefully considered and taken into account all those matters in the Response which relate to the Respondent’s assertion that it is the victim of an identity fraud. The Panel finds that the record shows no wrongdoing on the part of the Respondent regarding the disputed domain name but that, nevertheless, this is not a ground for denial of the Complaint.
The record shows that the true Respondent in the present case (described in this Decision as “the Registrant”) is an unknown third party who has listed the Respondent's personal details on the WhoIs of the disputed domain name. It is the Registrant’s rights and legitimate interests in the disputed domain name and the Registrant’s good or bad faith actings with which this proceeding is concerned, and not those of the Respondent. The Panel notes for completeness the fact that the Registrant used its own email address in registering the disputed domain name, rather than that of the Respondent. As such, and given that the Complaint was notified to the Registrant’s email address, the Panel is satisfied that the Registrant has received due notice of the Complaint. In the remainder of this Decision, the Panel will treat those contentions of the Complainant that are directed to the Respondent as though they were directed to the Registrant.
In light of the findings above, the Panel also requires to consider whether it is appropriate for the Respondent to be named as such in this Decision. In several similar cases, panels have chosen to name the respondent while making it clear in the body of the decision that references to that respondent do not reflect any suggestion of misconduct on their part (see, for example, Confédération Nationale du Crédit Mutuel v. Bryna Cytrynbaum, WIPO Case No. D2010-0165; and Barclays Bank PLC v. Mindy Heath, WIPO Case No. D2012-1830). The utility of naming the respondent in such cases has been said to be the need to ensure the correct implementation of the panel's decision under the Policy.
An alternative approach has been taken in a variety of cases in which the panel has provided for implementation of the decision while maintaining the privacy of a victim of alleged identity fraud. In these cases, the panel has redacted the respondent name in the published decision while providing this in a separate Appendix for forwarding to the concerned registrar (see, for example, Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677; and Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890). This Panel takes the view that the redaction approach is to be preferred in cases of likely identity fraud, particularly in an exceptional case such as the present where the named party has filed a formal Response largely out of concern that they will be unfairly identified in connection with the Decision. The Panel has therefore attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. The Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on the exceptional circumstances noted above.
B. Preliminary Matter – Language of the Proceedings
Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement, unless otherwise agreed by the parties, “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” In the present case, notwithstanding the Registrar’s representation that the language of the registration agreement is Dutch, the Registrar makes both an English and Dutch version of the registration agreement via its website. The Complainant submits that there does not appear to be any provision on the said website for a prospective registrant of a domain name to choose between the respective language versions and accordingly that by registering the disputed domain name the Respondent has accepted both languages with regard to the administrative proceeding. The Complainant also submits that the disputed domain name has been used in connection with an attempt by the operator of the disputed domain name to pass itself off as the Complainant by communicating with third parties and that such communications have been made in English, thus demonstrating the Registrant’s competence in English. The Complainant notes that it does not speak or write Dutch.
“Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.”
In the present circumstances, the Panel determines that the language of the proceedings should be English for the following reasons. First, it is clear that the Respondent is proficient in English, given that the Respondent issued various email communications to the Center and filed the Response in that language. Secondly, the Panel notes that the Registrant is proficient in English as this is the language used in connection with emailed communications issued via the disputed domain name. Thirdly, neither the Respondent nor the Registrant made any representations regarding the language of the proceedings despite having been invited to do so by the Center in a communication written in both English and Dutch. Fourthly, the Panel considers that it is appropriate to treat the Registrant as having agreed to both the English and Dutch languages during the registration process, given that the Registrar does not appear to provide any mechanism for the express selection of either language alone. Fifthly, the Panel finds that as the Complainant cannot speak or write Dutch, the Complainant would be unfairly disadvantaged by being required to translate the Complaint and to deal with the remainder of the proceedings in a language which it does not understand, particularly when this is set against the Respondent and Registrant’s apparent competence in English.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Registrant 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.
D. Identical or Confusingly Similar
The Complainant has provided ample evidence of its rights in registered trademarks for the word mark ARAMCO. This trademark is incorporated in its entirety in the disputed domain name. The Panel disregards the top level domain “.net” in the disputed domain name for the purposes of comparison with such trademark as is customary in cases under the Policy. This leaves an additional “s” in the disputed domain name. Panels in cases under the Policy have found that the addition in a domain name of one or more letters to a trademark typically does not serve to distinguish that domain name from the trademark, thus leading to a finding of confusing similarity. In the present case, the Panel considers that the potential for confusion is further exacerbated by the fact that the Complainant’s trademark is very well-known and that the additional letter has the appearance in English of a plural or possessive form, thus placing the entire focus of the disputed domain name on the incorporated trademark. In the case of the perception that the disputed domain name consists of a representation of a possessive form, it should be borne in mind that an apostrophe cannot be reproduced in a domain name for technical reasons.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and, accordingly, that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
E. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which rights or legitimate interests may be demonstrated in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the present case, the Complainant states that it has given no license or consent for the use of its trademark in the disputed domain name to the Registrant and did not authorise the Registrant to register the disputed domain name. There is no suggestion on the record that any of the circumstances in paragraph 4(c)(i) of the Policy apply and indeed there are indications to the contrary. Of most significance to the Panel is the fact that the Complainant has demonstrated with supporting evidence that the disputed domain name has been used, shortly after its registration, to pass off the operator of the disputed domain name as the Complainant with regard to the making of investment proposals to third parties. Furthermore, the Response indicates that false information was supplied by the Registrant to the Registrar of the disputed domain name when the Registrar sought to validate the Registrant’s identity.
In these circumstances, it is clear to the Panel on the balance of probabilities that the Registrant is engaged in some form of deceptive activity with a view to commercial gain and that the disputed domain name was registered with that in mind. As this Panel found in a case involving similar deceptive email communications issued from a domain name shortly after its registration, Home Retail Group v. Home Retail Group / Rafique Holding, WIPO Case No. D2012-2335, such activity cannot confer any rights or legitimate interests upon the Registrant.
Accordingly, the Panel finds that the Registrant has no rights or legitimate interests in the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied.
F. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
In the present case, the fact that the Respondent states that it is the victim of identity fraud and that the disputed domain name was registered without its knowledge or consent would be sufficient on its own to allow the Panel to make a finding of registration and use in bad faith (Confédération Nationale du Crédit Mutuel v. Bryna Cytrynbaum, supra). When this is added to the Complainant’s evidence of the use of the disputed domain name, soon after its registration, to provide apparent credibility to a range of communications which were designed to appear as though they emanated from the Complainant this leads to an inescapable conclusion in the mind of the Panel that the Registrant set out intentionally to target both the Complainant and its trademark using the disputed domain name for a purpose which had various fraudulent schemes, and commercial gain, as its ultimate object. While this conduct does not necessarily fit squarely within the examples described in paragraph 4(b) of the Policy, these are expressed to be non-exclusive and the Panel has no hesitation in finding that the present circumstances demonstrate registration and use of the disputed domain name in bad faith.
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 <aramcos.net> be transferred to the Complainant.
Andrew D.S. Lothian
Date: March 19, 2013