WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mr. Abby Heykali v. JingRong Chen and Petro Metal Inc.
Case No. D2015-0716
1. The Parties
The Complainant is Mr. Abby Heykali of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”).
The Respondent is JingRong Chen and Petro Metal Inc., of Houston, Texas, United States of America (the “United States”), represented by Locke Lord LLP, United States.
2. The Domain Name and Registrar
The disputed domain name <petro-metal.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2015. On April 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2015, 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 23, 2015.
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 April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Response was timely submitted with the Center on May 20, 2015.
On May 20, 2015, the Complainant emailed the Center, requesting permission to file supplementary submissions in response to the Respondent’s submissions. The Center replied to the Complainant on May 21, 2015, advising that the supplementary material received would be forwarded to the Panel and that the Panel would determine the admissibility of the material.
The Complainant emailed the Center attaching supplemental submissions on May 26, 2015.
The Respondent emailed the Center on May 26, 2015, asking for time to respond to the Complainant’s supplementary filing should the Panel decide to consider the material.
The Center appointed John Swinson as the sole panelist in this matter on May 27, 2015. 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 Mr. Abby Heykali of the United Kingdom, an individual educated in petroleum engineering and decision modelling, who runs an online business at the domain name <petrometal.com> (the “Complainant’s Domain Name”).
The Complainant holds a registered figurative trade mark for PETROMETAL.COM THE PETROLEUM & METALS EXCHANGE in the United Kingdom (filed on January 4, 2015 and entered in the register on April 3, 2015):
(the “Trade Mark”). The Complainant has provided evidence of this registration.
The Respondent is Mr. JingRong Chen, an individual of the United States who has worked in the oil and gas industry since 1996. Mr. Chen operates Petro Metal Inc. of the United States, which has been selling products and arranging transactions in the steel and petroleum industries since its incorporation on February 28, 2014.
The Disputed Domain Name was registered on February 24, 2014. The website at the Disputed Domain Name is an online business operated by the Respondent.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Complainant submits that the Disputed Domain Name is identical to the Trade Mark, and to the trading name of <petrometal.com> which the Complainant has used since 2000. The Respondent’s insertion of a hyphen into the Disputed Domain Name does not constitute a change from the Complainant’s Domain Name.
The Respondent has attempted to copy the content of the website at the Complainant’s Domain Name (which has not changed since 2002) and stylization of “PetroMetal” (with an upper case “M”), which heightens the confusion. This confirms that the Respondent knew this website existed before the Respondent started his website at the Disputed Domain Name.
Rights or Legitimate Interests
The Complainant submits that the Respondent’s incorporation of Petro Metal, Inc. two days after he registered the Disputed Domain Name demonstrates bad faith, since the Respondent must have known that the Complainant’s Domain Name had existed for 15 years. Even if the Respondent had not known of the website at the Complainant’s Domain Name prior to registering the Disputed Domain Name, he likely would have been alerted to its existence during the registration process for the Disputed Domain Name.
The Complainant also submits that the Respondent copied the contents of the website at the Complainant’s Domain Name.
The Respondent uploaded a new version of the website at the Disputed Domain Name with a logo and the heading “PETRO METAL™” in February, 2015, which the Complainant submits was done to deter the Complainant from enforcing his intellectual property rights.
Supplement A to Complaint
The Respondent carries on a further online business at the domain name <petromaterials.com>. This domain name was registered on September 29, 2003, and the Respondent has been running a business at this domain name since May, 2006. The Complainant submits that it is likely the Respondent knew of the Complainant’s business at least from one of these dates.
Further, the content of the website at <petromaterials.com> was the same as the content of the website at the Disputed Domain Name prior to February 2, 2015. The Complainant submits that the Respondent changed the content of that website after it was contacted by the Complainant.
The Complainant submits that these factors show the Respondent has no rights or legitimate interests in the Disputed Domain Name. The only interest the Respondent has in the Disputed Domain Name is in attempting to divert traffic looking for the Complainant’s business at the domain name <petrometal.com> to the Respondent’s business at <petromaterials.com> and passing off the intellectual property of the Complainant.
The Complainant submits that prior to the inclusion of a reference to PetroMaterials Corporation on the website at the Disputed Domain Name, the Respondent had attempted to hide this business from the Complainant.
Registered and Used in Bad Faith
The Complainant submits that use of the Disputed Domain Name is tied up with the Complainant’s Domain Name, trading name and Trade Mark, and hence demonstrates bad faith. The Respondent registered the domain name of an existing business with an extra hyphen to hijack the business and idea of the Complainant. Copying the contents of the Complainant’s website provides additional evidence of this.
The Complainant submits that the fact that Petro Metal Inc. did not exist at the time the Disputed Domain Name was registered (but was registered two days later), and that the Respondent is a Domestic For Profit Corporation, confirms the Respondent’s aspirations for financial gain at the expense of the Complainant by registering the Disputed Domain Name.
B. Respondent
The Respondent makes the following submissions.
Identical or Confusingly Similar
The Respondent submits that the Complainant does not have rights in the Trade Mark because it has not actually used the Trade Mark in commerce and has no bona fide intention to do so. The website at the Complainant’s Domain Name has not changed since at least as early as June 3, 2003. Also, the Complainant’s company Petrometal Limited was initially registered in 2003, but was dissolved in 2006. It was only registered again on January 22, 2015.
Further, the Complainant’s Trade Mark is a figurative mark which includes text other than the words “petro metal”, as well as images. These features of the Trade Mark are not included in the Disputed Domain Name. This means that the Disputed Domain Name cannot be considered identical to the Trade Mark.
As the Respondent’s business is confined to the United States and the Trade Mark is registered in the United Kingdom, these trade mark rights do not provide a legitimate basis for relief.
Rights or Legitimate Interests
The Respondent submits that it has rights and legitimate interests in the Disputed Domain Name as the Respondent operates a legitimate commercial enterprise doing business in the oil and gas industry.
The Respondent makes the following further submissions in relation to this element.
Complainant has failed to meet his burden of proof
The Respondent denies that incorporation of the company Petro Metal Inc. two days after registering the Disputed Domain Name demonstrates bad faith; this is common practice for start-up companies.
The Respondent submits that it is irrelevant whether the Respondent was aware of the Complainant’s Domain Name at the time it registered the Disputed Domain Name, as registration of a domain name alone does not confer trade mark rights. Also, as the Trade Mark did not exist at the time the Disputed Domain Name was registered, the Respondent could not have known of the Complainant’s Trade Mark rights at the time of registration.
Further, even if the Complainant had trade mark rights in the United Kingdom, this does not affect the Respondent’s ability to conduct business under the name Petro Metal in the United States.
The Respondent submits that it has not copied any portion of the website at the Complainant’s Domain Name.
Response to Supplement A to the Complaint
The Respondent submits that it has never taken any action in relation to the Disputed Domain Name with the intent to deceive. PetroMaterials Corporation and the Respondent (Petro Metals Inc.) are ongoing businesses. Neither the website at the Disputed Domain Name nor at <petromaterials.com> has been used as a forwarding site, or mimic the website at the Complainant’s domain name. The Complainant has not provided any evidence to the contrary. The Complainant has also admitted that the Respondent has been doing business in the petroleum industry for years.
According to the Respondent, the Complainant’s submission that it is likely the Respondent knew of the Complainant’s business when he registered the domain name <petromaterials.com> in 2003, or at least by 2006, is both unsupported by evidence and incorrect, as the Respondent is not the registrant of <petromaterials.com>.
The Respondent’s logo does not resemble any logo of the Complainant, so could not be used to deter the Complainant from his intellectual property rights as submitted by the Complainant.
The Respondent has not attempted to hide his relationship with PetroMaterials Corporation. Mr. Chen has been listed as a director of this company on the website at <petromaterials.com> since at least April 12, 2011. Any recent changes to the Respondent’s website have been an attempt by the Respondent to build his relatively new business, and were not in response to communications received from the Complainant.
Respondent’s Submissions in relation to Rights and Legitimate Interests
The Respondent submits that he has been doing business in the petroleum industry since 2003/2006. The Respondent made demonstrable preparation to use, and did use, the Disputed Domain Name (and a corresponding business name) in connection with a bona fide offering of goods and services before receiving notice of the Complainant or the dispute.
The Respondent first learned of the Complainant on October 20, 2014 when the Complainant contacted the Respondent. The Respondent registered the Disputed Domain Name in February, 2014, in preparation to use it in connection with his business. The Respondent actually began doing business a number of months after registering the Disputed Domain Name. The Respondent has provided an invoice dated July, 2014 as evidence that he was conducting business before the Complainant contacted him.
Registered or Subsequently Used in Bad Faith
The Respondent submits that he has neither registered nor subsequently used the Disputed Domain Name in bad faith.
The Respondent submits that it could not have “hijacked” the Complainant’s business and idea, because Complainant merely has a shell company and shell website that has not changed in more than a decade, so there is no business to hijack. The Complainant’s business is really one of domain name trading. The Respondent has provided some evidence that the Complainant has at various times owned other domain names.
Reverse Domain Name Hijacking
The Respondent makes the following submissions in relation to the Complainant’s conduct:
- The Complainant’s submission that it founded its business almost 15 years ago and it has been running ever since is incorrect, as the Complainant’s company, Petrometal Limited, was dissolved in 2006 and was only registered again in January, 2015.
- The Complainant created a fake email address for the Respondent in an effort to “trick” the Respondent’s customer into emailing the Complainant.
- The Complainant copied the Respondent’s customers on his email threats to the Respondent for the purpose of attempting to interrupt the Respondent’s business.
- At the time the Complaint was filed, the Complainant had been informed of all facts necessary to establish that the Respondent was operating a legitimate business and dispel any suspicions that the Respondent was a cyber squatter.
The Complainant’s misrepresentation of its business constitutes bad faith on the part of the Complainant. The Respondent asks the Panel for a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights to 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.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings “with due expedition” and gives the Panel the power to “determine the admissibility, relevance, materiality and weight of the evidence”. Generally, panels will only accept supplementary filings in “exceptional” circumstances.
The Complainant has provided two sets of supplementary submissions. These are addressed separately below.
Supplement A to the Complaint
The Complainant’s first supplementary filing was originally submitted to the Center on the same day it filed the original Complaint. The Center has treated this as a single Complaint, the entirety of which was transmitted to the Respondent at the same time. The Respondent has included submissions in relation to the content of Supplement A in his Response. Accordingly, the Panel has treated Supplement A as forming part of the Complaint, and has considered the submissions of both parties in relation to Supplement A.
Supplement B to the Complaint
The submissions made by the Complainant in Supplement B to the Complaint (filed 6 days after the Response was filed) are largely in response to the Respondent’s submissions that the Complainant is not a legitimate business operating in the petroleum industry, and is instead a domain name trader. They do not offer evidence that was not available to the Complainant at the time he initially submitted the Complaint.
Accordingly, the Panel declines to accept Supplement B to the Complaint as part of the record in this proceeding.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Trade Mark is a figurative mark which incorporates text and images other than the words “petro metal”. Generally, as design elements are not capable of being represented in a domain name, these elements of a trade mark will be ignored for the purpose of assessing identity or confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.11).
The Panel considers that the dominant textual element of the Trade Mark is “PetroMetal.Com”. The words “The Petroleum & Metals Exchange” appear in small print below “PetroMetal.Com”. The design elements of the Trade Mark are not so prominent or distinctive so as to consider the Trade Mark to be incapable of some degree of distinctiveness without these elements.
Previous Panels have considered that if the word portion of the relevant figurative trade mark is incapable of protection when standing alone then, unless the complainant could establish common law rights in the trade mark, it could not be considered to be identical or confusingly similar with the relevant domain name (see, e.g., Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH, WIPO Case No. D2012-2211, and the cases cited therein).
In this case, the Panel considers that the term “PetroMetal” is sufficiently distinctive to be capable of protection on its own. The Disputed Domain Name incorporates this term in its entirety, but separates the two parts of this term with a hyphen. The inclusion of a hyphen does distinguish the Disputed Domain Name from the dominant textual element of the Trade Mark.
The location of the Trade Mark registration is not relevant to establishing identity or confusing similarity.
The Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.
Neither party has provided any compelling relevant submissions regarding the Respondent’s rights to or legitimate interests in the Disputed Domain Name, or lack thereof. In fact, most of the submissions provided are directed to bad faith (by both the Respondent and the Complainant). A finding that the Respondent has registered and used the Disputed Domain Name in bad faith, while often relevant, does not by itself necessitate a finding that the Respondent does not have rights to or a legitimate interest in the Disputed Domain Name.
The Complainant has not addressed any of the matters set out in paragraph 4(c) of the Policy. While not the sole grounds that a respondent can use to show rights or legitimate interests in respect of paragraph 4(a)(ii) of the Policy, it would have assisted if the Complainant had focused its submissions and considered paragraph 4(c).
The submission made by the Complainant which relates to the Respondent’s lack of rights to or legitimate interests in the Disputed Domain Name is the fact that the Respondent registered its company, Petro Metal Inc., two days after it registered the Disputed Domain Name. However, this does not indicate that the Respondent was not running (or preparing to run) a legitimate business using the Disputed Domain Name. In fact, as submitted by the Respondent, it is not uncommon practice for founders of start-up companies to secure their intellectual property (including domain names) before formally registering a business or company.
Based on this limited evidence, the Panel finds that the Complainant has failed to make out a prima facie case on this element.
Further, the Panel considers that the limited submissions provided by the Respondent in relation to its rights to or legitimate interests in the Disputed Domain Name tend to demonstrate that the Respondent may have such rights or interests for purposes of the Policy.
Rights or legitimate interests can be demonstrated by the Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods or services, before it received notice of the dispute (paragraph 4(c)(i) of the Policy). The Respondent submits that he first learned of the Complainant and his business when contacted by the Complainant in October 2014. At that time, the Respondent’s business was already underway, and the Respondent has provided an invoice dated earlier in 2014 as evidence of this. The Panel considers this single instance of a sale by the Respondent’s business sufficient to show that the Respondent was using the Disputed Domain Name in connection with a bona fide offering of goods and services before the Respondent had notice of the dispute.
Therefore, the Complainant does not succeed in establishing the second element of the Policy.
D. Registered and Used in Bad Faith
In light of the above finding, the Panel is not required to consider the third element. However, given that most of the Complainant’s submissions relate to the Respondent’s bad faith, the Panel considers that it should briefly address some of those submissions.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent both registered and subsequently used the Disputed Domain Name in bad faith.
In relation to registration of the Disputed Domain Name in bad faith, the Complainant submits that it was likely that the Respondent was aware of the Complainant’s Domain Name at the time the Respondent registered the Disputed Domain Name. The Panel accepts that this is a likely inference, because it would be typical to try to register a domain name without a hyphen prior to registering a domain name with a hyphen. However, the Complainant has not provided any evidence to show that the Respondent was aware of the Complainant or the Complainant’s business at the time it registered the Disputed Domain Name. An Internet search of the term “petro metal” does not provide evidence of an active or well-known business. Also, the Trade Mark was not registered at the time the Disputed Domain Name was registered.
Further, the Complainant has provided submissions in relation to a company associated with the Respondent, namely PetroMaterials Corporation. He submits that, because the Respondent registered a domain name for this company in 2003 and has been running a business at that domain name since 2006, and this business is operating in the same industry as that of the Complainant, the Respondent must have been aware of the Complainant and the Complainant’s business since at least either of these dates.
However, there is no evidence to show that it was the Respondent that registered the domain name for the PetroMaterials business. It is unclear how long the Respondent has been associated with PetroMaterials Corporation. However, it is quite possible (and the Complainant has not provided any evidence to show otherwise) that the Respondent was not involved in establishing the website or the business for this company, and therefore would not have been aware of other organizations trading under similar names in this industry. Even if the Respondent did register the domain name for the PetroMaterials business, the Panel does not infer from this that the Respondent would likely have been aware of the Complaint or the Complainant’s business as a result.
Bad faith registration and use can be shown where a respondent has used a relevant domain name to intentionally attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website (paragraph 4(b)(iv) of the Policy).
The Complainant submits that the contents of the website at the Disputed Domain Name were at one time the same as the website at <petromaterials.com>, and that the Respondent changed the website at the Disputed Domain Name after he was contacted by the Complainant. The Complainant submits that these actions show the Respondent is attempting to divert traffic looking for the Complainant’s business to PetroMaterials Corporation.
However, the asserted similarity of the websites of two related companies does not indicate the Respondent’s intention to divert Internet traffic from the Complainant to the Respondent’s businesses. The website at the Disputed Domain Name does not divert traffic to or set out any association with the PetroMaterials business.
In relation to the Complainant’s remaining submissions on bad faith use:
- The Panel has found no evidence that the Respondent copied any aspect of the website at the Complainant’s Domain Name.
- The fact that the Respondent corporation was registered after the Disputed Domain Name and is a “for profit” company does not indicate that the Respondent was seeking financial gain at the expense of the Complainant.
In light of the above, the Complainant does not succeed in establishing the final element of the Policy.
E. Reverse Domain Name Hijacking
Most of the Respondent’s submissions in relation to the bad faith element of the policy are an attempt to show bad faith on the part of the Complainant, and are not aimed at defending its own registration and use of the Disputed Domain Name.
The Respondent submits that the Complainant’s business is really one of domain name trading, and that this misrepresentation of its business constitutes bad faith on the part of the Complainant. The Respondent asks the Panel for a finding of Reverse Domain Name Hijacking.
While the Complainant has not succeeded in this case, the Panel is not prepared to find that its Complaint was unjustified.
Although some of the Complainant’s arguments may have been weak, the Complainant still produced arguments for each element of the Complaint, the Complainant has a registered trademark, and succeeded on the first element. The Panel finds that the Complaint was not brought in bad faith, and consequently there is no basis for finding the Complainant has engaged in reverse domain name hijacking.
7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: June 8, 2015