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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dubai Natural Gas Company Limited - Dugas LLC v. Hulli Atude

Case No. D2014-1851

1. The Parties

The Complainant is Dubai Natural Gas Company Limited - Dugas LLC of Dubai, United Arab Emirates ("UAE"), represented by Al Tamimi & Company, UAE.

The Respondent is Hulli Atude of llorin, Kwara, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <dugas-ae.com> ("the Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 23, 2014, 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. In response to an email from the Center, the Complainant filed an amended Complaint on October 30, 2014.

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 the Respondent of the Complaint, and the proceedings commenced on October 31, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 21, 2014.

The Center appointed Isabel Davies as the sole panelist in this matter on December 8, 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

The Complainant has registered trademark rights for DUGAS in classes 4 and 40 registered UAE on August 20, 2013.

The Complainant registered the domain name <dugas.ae>.

The Respondent registered the Disputed Domain Name on May 21, 2014.

5. Parties' Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant states that the Complaint is based on the DUGAS trademarks registered in classes 4 and 40 in the UAE, the country of origin. The trademark protection covers goods in classes 4 and 40. In addition to the trademark infringement caused, the Complainant states that the Disputed Domain Name is also infringing the Dubai Natural Gas Company Limited - Dugas trade name.

The Complainant contends that the dominant part of the Disputed Domain Name comprises the word "dugas", identical to the registered trademark DUGAS, which has been registered by the Complainant as a trademark in many classes in the UAE

In addition, the DUGAS Co. Ltd, owns the domain name <dugas.ae> which it uses for its official and corporate website.

The Complainant contends that the Disputed Domain Name is comprised of the Complainant's registered trademark DUGAS and the country code abbreviation "ae" that stands for "Arab Emirates", which merely adds a geographical term and that such use is insufficient to distinguish the Disputed Domain Name from the Complainant's mark.

In addition, it states that DUGAS Co. Ltd. is the trade name of the Dugas company and that the addition of the suffix "ae", which is the home country of Dugas, is extremely confusing and will have an impact on the overall impression in combination with the trademark DUGAS, a reputed UAE trademark.

The Complainant states that Dugas was founded in 1977 to provide efficient and reliable management and operation of gas processing facilities that include the design, engineering and construction of the Dubai Government's onshore and offshore gas complexes consisting of platforms, pipelines, processing plant and terminals. Dugas is a member of the Emirates National Oil Company Group. Dugas has played an integral role in the development of Dubai and has a history which reflects a resourceful commitment to its people and its future.

It also states that Dugas' strength is demonstrated in its planning, engineering, construction, operations, maintenance and management of complex infrastructure and industrial facilities. After thirty years Dugas enjoys a strong and established presence in the oil, gas and petrochemical industry in the Gulf and Middle East, and this combined experience has enabled Dugas to grow into a fully diversified organisation providing quality and safety with efficiency and cost effectiveness. The Complainant's main operating company is in the UAE, the home country of Dugas.

Therefore, it is stated, DUGAS is a trademark and Dugas Co. Ltd. is a company name identifiable by the public as a successful and reputable company since it is a well-established mark in the UAE market (a UAE Google search for "Dugas" reveals about 602,000 results).

The Complainant contends that an Internet user is likely to assume that the Complainant is the sponsor of, or associated with, the website identified by the Disputed Domain Name and that the Respondent is trying to mislead the public and is implying that he is linked to the Complainant.

Rights or Legitimate Interests

The Complainant states that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the DUGAS trademark.

It states that use of a fictitious name and address in registering the Disputed Domain Name is contrary to paragraph 2 of the Policy, and in breach of Clause 2 of the Registration Agreement for the Disputed Domain Name. It contends that if the Respondent had some rights or legitimate interests in respect of the Disputed Domain Name he would not have gone to such extremes to attempt to hide his identity and contact details, used the name of a fictitious company, used the Disputed Domain Name to substantially and illicitly copy the website of the Complainant's registered trademark and attempted to collect money by pretending to recruit employees, using the Complainant's registered trademark. Given this level of subterfuge on the part of the Respondent, the Complainant avers that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant states that since the registration of the Disputed Domain Name, the Respondent has never used it in connection with a bona fide offering of goods or services. It states that on the contrary:

- The Disputed Domain Name is misleading consumers and has been used in relation to a fake website supposedly associated with the Complainant. The Disputed Domain Name is used to promote fake recruitment services on behalf of the Complainant.

- The website was created and is used for commercial purposes. The Respondent is misleading consumers and tarnishing the trademark at issue for his own commercial gain.

- The Respondent uses fake job offers presumably on behalf of the Complainant and asks Internet users and job-seekers to pay visa fees and insurance fees, which demonstrates that the website has been created and is being used for commercial gain.

The Complainant therefore contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Registered and Used in Bad Faith

The Complainant states that the Disputed Domain Name was registered in 2014 well after the Complainant registered its trademark and domain name. As the Complainant's trademark and business are well-known in the UAE the Complainant contends that this means that the Respondent was aware of the existence of the DUGAS trademark and the Dugas Co. Ltd. company when he registered the Disputed Domain Name. It states that the Respondent is promoting recruitment services on behalf of the Dugas company through the Disputed Domain Name by using the DUGAS trademark in addition to the Dugas Co. Ltd. company which makes it impossible for the Respondent not to know about the existence of the trademark.

The Complainant states that the content of the website shows both the use of the DUGAS trademark together with Dugas Co. Ltd. - the Complainant's company name as a legal entity, which by itself constitutes a case of infringement of Intellectual Property rights. The Complainant states that this makes it obvious that the Respondent was and is completely aware of the existence of the Complainant's rights. Furthermore, the Disputed Domain Name is being used to offer services in association with the Complainant's field of activities as shown in the Complainant's official website "www.dugas.ae".

The Complainant contends that the Disputed Domain Name was registered in bad faith as the Respondent is the registrant of other fraudulent domain names. These domain names are listed on a website that provides information on "[f]ake website[s] and scams" to alert the public regarding different types of fraud, as shown on the "www.scamwarners.com" website. This website is dedicated to warning the public about scams and sharing experiences in order to avoid Internet users being misdirected. Therefore, the Complainant contends, bad faith is established.

The Respondent is using the Disputed Domain Name intentionally to attract Internet users/job-seekers for his own commercial gain by pretending to be the Complainant. The website at the Disputed Domain Name is clearly commercial and aims to gain visitors to the main website of the Respondent, "www.dugas-ae.com". The Respondent, it states, is falsely running a recruitment website that asks Internet users/job-seekers to pay in advance visa fees and insurance fees.

The Complainant summarizes saying that DUGAS is a well-established trademark and name in the UAE. There is no doubt that the Respondent was aware of the rights the Complainant has in the DUGAS trademark and the value of the said trademark, and trade name at the time of the registration.

There is no connection between the Respondent and the Complainant. By using the Disputed Domain Name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.

Consequently, the Complainant contends that the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a), that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party's failure to comply with any provision of or requirement under the Rules, including the Respondent's failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

Identical or Confusingly Similar

The Panel accepts that the dominant part of the Disputed Domain Name comprises the word "dugas", identical to the registered trademark DUGAS, which has been registered by the Complainant as a trademark in many classes in the UAE.

The Disputed Domain Name is comprised of the Complainant's registered trademark DUGAS and the country code abbreviation "ae" that stands for "Arab Emirates", which merely adds a geographical term. The Panel accepts that such an addition is insufficient to distinguish the Disputed Domain Name from the Complainant's mark.

Prior decisions under the Policy have held that the mere addition of a geographical term to a mark does not negate the confusing similarity between the mark and the domain name. See, PepsiCo, Inc. v. Kieran McGarry, WIPO Case No. D2005-0629 and C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466. In the latter decision, the panel stated that "the disputed domain name is composed of Complainant's mark, only with the addition of 'usa'. The addition of a geographical suffix to a trademark, such as in the present case, is a common way of indicating the geographical area that goods are offered under a trade mark". The panel finds that "the addition of the geographical suffix 'usa' does not sufficiently alter the underlying mark to which it is added" and that in the panel's opinion, "a user of the Internet is likely to assume that Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name".

In a similar case, PepsiCo, Inc. v. QWO, WIPO Case No. D2004-0865, the panel decided that "forming a domain name … by appending a country name … to a complainant's mark … is completely insufficient to dispel user confusion from inevitably occurring. In fact, doing so very likely exacerbates rather than ameliorates the confusion. The simple reason is that, given well-known and widely followed naming conventions in forming domain names, Internet users in a given country or who have an interest in that country and desire to reach a website of a corporation or other entity operating in that country would likely think to construct a domain name by simply appending the name of the country to the name or mark associated with that corporation or entity followed by the general commercial generic Top-Level Domain …".

The Panel accepts that DUGAS is a trademark and Dugas Co. Ltd. is a company name identifiable by the public as a successful and reputable company and that an Internet user is likely to assume that the Complainant is the sponsor of, or associated with, the website identified by the Disputed Domain Name. The Panel finds that the Respondent is trying to mislead the public and implying that he is linked to the Complainant.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark DUGAS.

Rights or Legitimate Interests

The Panel accepts that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the DUGAS trademark. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent."

The Panel accepts that since the registration of the Disputed Domain Name, the Respondent has never used the Disputed Domain Name in connection with a bona fide offering of goods or services. The website is currently not available, however the Panel accepts that the Disputed Domain Name was misleading consumers and has been used in relation to a fraudulent website supposedly associated with the Complainant promoting fake recruitment services on behalf of the Complainant. The Panel accepts that the Respondent was misleading consumers for his own commercial gain.

Based on the evidence in the available record (including examples of fraudulent emails that reference the Disputed Domain Name), the Panel accepts that the Respondent used the Disputed Domain Name in connection with fake job offers purportedly on behalf of the Complainant.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

Registered and Used in Bad Faith

The Panel accepts that the Disputed Domain Name was registered in 2014 after the Complainant registered its trademark and domain name. The Panel accepts that the Respondent was aware of the existence of the DUGAS trademark and the Dugas Co. Ltd. company when he registered the Disputed Domain Name.

The Panel also finds that the promotion by the Respondent of recruitment services on behalf of the Dugas company through the Disputed Domain Name makes it inconceivable that the Respondent did not know about the existence of the trademark.

The Panel accepts that the Respondent used the Disputed Domain Name intentionally to attract Internet users/job-seekers for his own commercial gain by pretending to be the Complainant. The Respondent ran a recruitment website that requested Internet users/job-seekers to pay in advance visa fees and insurance fees.

The Panel accepts that there is no connection between the Respondent and the Complainant and that by using the Disputed Domain Name the Respondent is not making a legitimate noncommercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain.

As noted above, the Disputed Domain Name does not currently resolve to an active website. However, such "passive holding" does not prevent a finding of use in bad faith. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. Given the past bad faith use of the Disputed Domain Name, and the fact that it is impossible to conceive of any plausible active good faith use of the Disputed Domain Name by the Respondent, the Panel finds that this passive holding does not prevent its finding below.

The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith.

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 Name <dugas-ae.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: December 12, 2014

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