WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halliburton Energy Services, Inc. v VistaPrint Technologies Ltd.
Case No. D2015-1903
1. The Parties
The Complainant is Halliburton Energy Services, Inc. of Houston, Texas, United States of America, represented by Novak Druce Connolly Bove & Quigg LLP, United States of America.
The Respondent is VistaPrint Technologies Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <hailiburton.com>, <halliburrton.com>, <halliburtton.com> and <hallibuton.org> (the "Disputed Domain Names") are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2015. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 26, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 29, 2015. On the same date, a third party sent an email communication to the Center stating that the Respondent would cooperate with the transfer of the Disputed Domain Names. The proceedings were suspended on November 5, 2015. The proceedings were reinstituted on December 4, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. The Respondent did not submit any response.
The Center appointed William P. Knight as the sole panelist in this matter on January 7, 2016. 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 and its related corporations are providers of products and services to the energy industry. It has more than 370 trademark registrations in 60 countries worldwide, including United States trademark registrations for HALLIBURTON numbers 2,575,819 and 2,575,840 each with a priority date of June 4, 2002.
The Respondent registered the Disputed Domain Names as follows:
<halliburrton.com> was registered on July 20, 2015;
<halliburtton.com> was registered on August 24, 2015;
<hailiburton.com> was registered on September 29, 2015; and
<hallibuton.org> was registered on September 30, 2015.
Only the Disputed Domain Names <hailiburton.com> and <halliburtton.com> are in use with some sort of website.
The Disputed Domain Name <hailiburton.com> is directed to a website which, in addition to the words "Vistaprint" and "Make an impression", states only:
"Websites are FREE at vistaprint.com/websites. Create Your Website in Minutes. Grow your business with an online presence. Coordinate your brand-online and offline. No programming skills needed."
The Disputed Domain Name <halliburtton.com> is directed to a website which states only:
"This Vistaprint site has not yet been published. COMING SOON! www.halliburtton.com is under construction and hasn't been published yet. To create your own free website on Vistaprint Click Here"
As no Response has been submitted, nothing is known about the Respondent other than that the Respondent has been the recipient of numerous complaints under the Policy and other domain name dispute resolution policies, to date some 24 complaints determined through the Center, over half of which were lodged and decided in 2015, and some 21 through the National Arbitration Forum, in respect of domain names incorporating well-known trademarks of a wide variety of enterprises, from a major automobile manufacturer to financial institutions and even a university. In all cases, bad faith registration and use has been found and the disputed domain names transferred.
As indicated above, in the course of the administration of this Complaint, the proceedings were suspended because the Center received a communication from an organization called "CIMPRESS" stating that the Respondent was merely engaged by CIMPRESS to provide a web hosting service for customers of CIMPRESS, the customers having chosen the Disputed Domain Names through an automated process. Further, the communication stated, the customer accounts associated with each of the Disputed Domain Names had already been terminated, so that the Respondent had no interest in them. The Respondent, it was said, "would gladly cooperate with domain transfers and the release of any customer information used to
register these domains." However, such transfers did not eventuate, resulting in the reinstitution of these proceedings.
5. Parties' Contentions
The Complainant contends:
- that it was founded in 1919 and is now one of the world's largest providers of products and services to the energy industry. It does business in more than 80 countries so that HALLIBURTON is a well-known mark around the world;
- that each of the Disputed Domain Names is confusingly similar to the Complainant's well-known trademark HALLIBURTON and constitutes a case of "typo-squatting" - i.e., intentional registration of domain names which are misspellings of distinctive names;
- that the Respondent has no rights or legitimate interests to any of the Disputed Domain Names because it is neither personally known by, nor owns a company, nor a trademark corresponding to any of the Disputed Domain Names;
- that the Complainant has neither licensed nor permitted the Respondent to use its HALLIBURTON trademark nor to apply for any domain name incorporating this mark;
- that the Respondent's history of adverse findings under the Policy would indicate a pattern of conduct of the registration and use of well-known brands of others in bad faith for some personal, and unjustified, advantage;
- that each of the Disputed Domain Names has been registered and used in bad faith because the Respondent must have been aware of the fame of the Complainant's trademark and the Respondent, or someone using the Respondent to conceal his identity, immediately after registration of each of the Disputed Domain Names and other similar domain names, has used the email addresses derived from them in an attempt to defraud the Complainant or related corporations or to obtain by deceit the personal information of individuals, such as passport details. The Complainant has provided very compelling evidence of such a pattern of conduct.
The Complainant refers in respect the last matter to a number of very pertinent earlier decisions under the Policy: Roper Industries, Inc. v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1828 (Respondent used disputed domain as the return email address in fraudulent correspondence sent to an officer of the complainant in that case); TVS Motor Company Limited. v. VistaPrint Technologies Ltd, WIPO Case No. DCO2014-0007 (use of disputed domain names to create emailspurporting to be email addresses of Complainant's officers); Tetra Laval Holdings & Finance S.A. v. VistaPrint Technologies Ltd, WIPO Case No. D2014-1387 (Respondent created scam email address and targeted complainant's customers by passing itself off as employee of the complainant); Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016 (Respondent registered and used the domain name to perpetrate email fraud impersonating employee of complainant); SouthCrest Bank, N.A. v. VistaPrint Technologies Ltd., WIPO Case No. DCO2015-0009 (fraudulent attempt to use domain name in an email address impersonating complainant's CFO).
The Complainant further says that any Respondent argument that the bad faith use of the Disputed Domain Names should be attributed to third parties, as the Respondent is merely a registration or web hosting service used by others, should be rejected: "Assuming arguendo that the Respondent has allowed the Disputed Domain Names to be used by third parties whose identity the Respondent is concealing, the Respondent is complicit in the cybersquatting."
The Complainant cites Roper Industries, Inc. v. VistaPrint Technologies Ltd, supra, in which the learned panel said that this situation is analogous to one in which a privacy or proxy registration service is used, and that privacy or proxy registration service does not disclose the identity of the underlying registrant in a timely manner. In such a situation it is appropriate to treat the proxy registration service as the respondent of record. This situation is outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), at paragraph 3.9:
"Identification by a Registrar or privacy proxy service of another such service as the purported registrant of the domain name may also constitute evidence of cyberflight and bad faith, as may failure in response to a UDRP provider's request to timely confirm the identity and contact information of the registrant of the domain name where the registrant listed in the WhoIs is a privacy or proxy service (although such failure would not prevent a panel from deciding such cases, with the privacy or proxy service typically being regard as the relevant respondent of record)."
Further the Complainant cites the decision in Statoil ASA v. VistaPrint Technologies Ltd, WIPO Case No. D2014-0511, "if the Respondent did have legitimate purposes in registering and using the disputed domain name it would have responded."
The Respondent did not file any Response to the Complaint. Only the correspondence referred to above from the entity identifying itself as CIMPRESS and having the same address as the Respondent was received.
6. Discussion and Findings
To have the Disputed Domain Names transferred to it, the Complainant must prove each of the following. In respect of each of the Disputed Domain Names (Policy, paragraph 4(a)):
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it owns numerous trademark registrations of the mark HALLIBURTON in the United States and other countries.
Each of the Disputed Domain Names is clearly confusingly similar to the Complainant's HALLIBURTON trademark. This is a typical case of "typo-squatting" where the infringing domain name is one letter less or more than or different from the Complainant's mark, usually in such a way that the omission or addition will not be noticed or will come about by virtue of a typing error. Such confusing similarity in fact is demonstrated by the Complainant's evidence in which it was shown that customers of or suppliers to the Complainant or a related entity, and even employees of the Complainant, were deceived or confused by the similarity.
The Panel thus finds that each of the Disputed Domain Names is confusingly similar to the Complainant's trademark HALLIBURTON.
B. Rights or Legitimate Interests
The Respondent clearly has no legitimate interests in any of the Disputed Domain Names, any more than it had in the dozens of other domain names comprising the marks of third parties it has appropriated, referred to in the numerous prior complaints against it under the Policy. If there really are shadowy figures using the services of the Respondent (or CIMPRESS), the Panel has no evidence as to who they are in order to come to a different conclusion, as the Respondent has failed to disclose who they are, if they exist. That said, the use of the Disputed Domain Names for the purpose of impersonating the Complainant in emails designed to defraud or improperly obtain personal information, the only know use made of the Disputed Domain Names, would not be sufficient to establish rights or legitimate interests on anyone's behalf.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Names.
C. Registered and Used in Bad Faith
The well-known and strong trademark HALLIBURTON is so obviously connected with the Complainant that by definition the registration of each of the Disputed Domain Names was made in opportunistic bad faith, and subsequent use by the Respondent (or someone using the Respondent's services) of each of the Disputed Domain Names deliberately to exploit the similarity of each of them to the Complainant's name and trademark in order to deceive is clearly use in bad faith.
If what was intimated in the communication from CIMPRESS regarding the Respondent was true, even if each of the Disputed Domain Names was in fact registered on behalf of third parties, the Panel would accept the Complainant's arguments, and the findings of previous panels, regarding a finding of registration and use in bad faith of each of the Disputed Domain Names by the Respondent. In that regard, the Panel notes that, under the Respondent's own contract terms and policies at:
the Respondent obtains from each of its customers a binding promise that a domain name sought to be registered on its behalf, amongst other things, reflects a trademark that the customer is entitled to use, and does not infringe any third party trademark rights, notes the obligations on the Respondent's part to make disclosure of the customer's identity in certain circumstances under ICANN policies (such as the Policy) as well as its registration agreement with the Registrar, and secures the customer's consent to such disclosure as well as transfer of the subject domain name in response to any third party rights.
That the Respondent (i) has such lax procedures and is so neglectful of its own policies as to make it the vehicle for repeated domain name registrations for fraudulent and deceitful purposes, (ii) ignored the legitimate claims of the Complainant (as well as previous complaints from other trademark owners) and, (iii) even after these proceedings were commenced, chose not to make the disclosure and transfer the Disputed Domain Names as it had a right to do, clearly sounds in bad faith.
The Panel, therefore, finds that the Respondent registered and used each of the Disputed Domain Names 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 Names <hailiburton.com>, <halliburrton.com>, <halliburtton.com> and <hallibuton.org> be transferred to the Complainant.
William P Knight
Date: January 11, 2016