WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cimarex Energy Co. v. Devon Mcclure
Case No. D2014-1181
1. The Parties
Complainant is Cimarex Energy Co. of Denver, Colorado, United States of America, represented by Sheridan Ross. P.C. of Denver, Colorado, United States of America.
Respondent is Devon Mcclure of Chandler, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cimarex-energy.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2014. On July 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 31, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 4, 2014. 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 states that it is "in the business of oil and natural gas drilling, production and exploration"; and that it "has been operating under the business name 'CIMAREX ENERGY CO.' since it was incorporated in Delaware on February 14, 2002."
Complainant further states, and has provided appropriate evidence in support thereof, that it is the owner of U.S. Reg. No. 2,877,970 for the mark CIMAREX (registered on August 24, 2004) for use in connection with various oil and natural gas services; and U.S. Reg. No. 2,877,971 for CIMAREX & Design (registered on August 24, 2004), for use in connection the same services. (These registrations are referred to collectively hereafter as the "CIMAREX Trademark".) Complainant also states, and has provided appropriate evidence in support thereof, that it is the registrant of the domain name <cimarex.com>, which was created on February 25, 2002, and advertises Complainant's oil and gas services.
The Disputed Domain Name was created on January 23, 2014. Complainant states, and provides evidence to support, that the Disputed Domain Name has been used in multiple email communications soliciting employment – but that Complainant "did not […] authorize these emails, and Complainant does not extend job offers to applicants from outside of the United States via email."
5. Parties' Contentions
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights because, inter alia, the Disputed Domain Name "incorporates the entire written, literal portion of the [CIMAREX Trademark] along with the term 'ENERGY', which Complainant uses in its business name"; and "[t]he addition of the word 'ENERGY' does not eliminate the similarity between Complainant's registered mark and the domain name because the word 'ENERGY' is a descriptive term that Complainant has been using in its business name for over ten years."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Respondent is "using the email server associated with the disputed domain name to send fraudulent job offers while passing itself off as Complainant"; "[t]here is nothing in the WHOIS record that indicates that Respondent is commonly known by 'CIMERAX' or 'Cimarex Energy'"; the Disputed Domain Name "is currently suspended by the Registrar for spam and abuse"; and "Respondent is attempting to commercially gain from use of the email server associated with the domain name by passing itself off as Complainant to obtain personal information from unsuspecting individuals."
- Respondent registered and is using the Disputed Domain Name in bad faith because, inter alia, "Respondent was using the disputed domain name in connection with a job fraud scam to provide cover for sending fraudulent email messages from […]@cimarex-energy.com. The individuals receiving the fraudulent email messages believed that the emails came directly from Complainant and contacted Complainant regarding the job offers therein […] Internet users erroneously believed that the disputed domain name is owned by or affiliated with Complainant."
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, as well as the accompanying copies of trademark registration certificates, it is apparent that Complainant has rights in and to the CIMAREX Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CIMAREX Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "cimarex-energy"), as it is well-established that the Top-Level Domain ".com" may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
The addition of certain words, as here (that is, "energy"), can "exacerbate the confusing similarity between the [Complainant's] trademark and the Domain Name and increase the risk of confusion between the Domain Name and the […] trademarks." Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill, WIPO Case No. D2010-2124. See also Yellow Corporation v. MIC, WIPO Case No. D2003-0748 ("when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity").
Here, because the word "energy" is associated with the CIMAREX Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant's trademark. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, inclusion of a hyphen in the Disputed Domain Name is irrelevant. See, e.g., Di El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk, WIPO Case No. D2007-0961 ("the use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue") (citing The Coca-Cola Company v. Bernard Peters, WIPO Case No. D2007-0478); and Diamonique Corporation v. Foley Services, WIPO Case No. D2007-0893 ("the presence of the dash [in the Disputed Domain Name] is irrelevant […] [and] 'add[s] no distinctiveness whatsoever'" (citing Dr. Grandel GmbH v. West End Internet Services, WIPO Case No. D2005-0853).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent is "using the email server associated with the disputed domain name to send fraudulent job offers while passing itself off as Complainant"; "[t]here is nothing in the WHOIS record that indicates that Respondent is commonly known by 'CIMERAX' or 'Cimarex Energy'"; the Disputed Domain Name "is currently suspended by the Registrar for spam and abuse"; and "Respondent is attempting to commercially gain from use of the email server associated with the domain name by passing itself off as Complainant to obtain personal information from unsuspecting individuals."
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Here, among other things, Complainant has argued that Respondent's use of the Disputed Domain Name to facilitate the fraudulent offer of employment opportunities constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. In support thereof, Complainant has cited Starwood Hotels & Resorts Worldwide, Inc. The Sheraton LLC, and Sheraton International, Inc. v. PrivacyProtect.org / power mark consult, mark pd, WIPO Case No. D2012-1125. In that case, as here, Complainant "provided evidence showing that Respondent has used the disputed domain name in connection with fraudulent job fraud scam especially to provide cover for sending fraudulent email messages." The panel there found that "the public is likely to be confused into thinking that the disputed domain name […] has a connection with Complainant, which is contrary to fact" and that "Internet users may be led to believe that the disputed domain name is owned by Complainant or is the official authorized partner of Complainant, which is not the case, for Respondent's commercial gain." This Panel agrees and finds that the same applies in the present proceeding.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <cimarex-energy.com> be transferred to Complainant.
Douglas M. Isenberg
Date: August 12, 2014