WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halliburton Energy Services, Inc. v. Domains By Proxy, LLC / "Brian Ware", halliburtoninc
Case No. D2015-2021
1. The Parties
Complainant is Halliburton Energy Services, Inc. of Houston, Texas, United States of America ("United States" or "U.S."), represented by Novak Druce Connolly Bove & Quigg LLP, United States.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / "Brian Ware" of Meridian, Idaho, United States, represented by Naylor & Hales, P.C., United States.
2. The Domain Name and Registrar
The disputed domain name <halliburtoninc.com> (the "Disputed Domain Name") is registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 20, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. The Center received a communication from a third party on December 4, 2015.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 28, 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
Founded in 1919, Complainant is one of the world's largest providers of products and services to the energy industry, with more than 70,000 employees in over 80 countries. Complainant maintains and operates a website at "www.halliburton.com". It has used the HALLIBURTON mark in commerce for more than 80 years and owns numerous United States trademark registrations for the mark, as well as formatives thereof. It owns more than 370 trademark registrations in 60 countries worldwide for the HALLIBURTON mark and other HALLIBURTON-formative marks. Its annual revenues in 2014 were over USD 30 billion.
Respondent is not affiliated with Complainant, and is not licensed to use Complainant's HALLIBURTON mark or to register or use domain names incorporating that mark.
Respondent registered the Disputed Domain Name on October 13, 2015.
5. Parties' Contentions
Complainant alleges that the Disputed Domain Name is confusingly similar to Complainant's distinctive and well-known HALLIBURTON mark because the only difference is the addition of the letters "inc" at the end; that Respondent has never been licensed or authorized to use the mark; and that Respondent's conduct is in bad faith as evidenced both by the similarity of the Disputed Domain name to Complainant's mark and Respondent's use of the Disputed Domain Name to target the Complainant in a fraudulent email and phishing scheme.
Respondent did not file a reply. On December 4, 2015, a third party responded to the Complaint, asserting that his name and business address were improperly used by Respondent as the purported name and address of the owner of the Disputed Domain Name; that he had been the subject of identity theft by Respondent; that he has no knowledge or relationship with the Complainant, the Disputed Domain Name, or Respondent; and that he agrees with Complainant's request for relief based upon Respondent's fraud in the registration process.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to Complainant's distinctive and well-known HALLIBURTON mark within the meaning of paragraph 4(a)(i) of the Policy. Respondent merely added three letters to the end of the HALLIBURTON mark.
Complainant's rights in the HALLIBURTON mark are clearly established through registration and use, both in the U.S. and in numerous other countries around the world. Complainant's mark is entitled to a presumption of validity by virtue of its registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
The Disputed Domain Name contains the entirety of Complainant's mark and simply adds the letters "inc" at the end. The addition of the letters "inc" does not dispel the confusing similarity of the Disputed Domain Name to the Complainant's mark, but rather demonstrates that the Respondent was targeting the Complainant's mark. Indeed, "inc" is the common abbreviation for "incorporated," and inasmuch as Complainant is a corporation, that addition does not minimize or avoid the likelihood confusion. See Heartland Payment Systems v. Purple Bucquet, WIPO Case No. D2010-0722 (disputed domain name that adds one letter to the Complainant's mark is confusingly similar because "an unsuspecting consumer would find the disputed domain name visually and phonetically similar and almost identical to the Complainant's mark".); OOM Holding N.V. v. Diamond Point Enterprises Limited, WIPO Case No. DNL2011-0076 (disputed domain name is confusingly similar to the Complainant's trademark when the domain name adds only one letter to the trademark and trade name of Complainant); TVS Motor Company Limited v. VistaPrint Technologies Limited, WIPO Case No. DCO2014-0007 (adding two additional letters at the end of the domain name "does nothing to remove the resemblance to key elements of the trademarks.")
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the Disputed Domain Name for purposes of paragraph 4(a)(ii) of the Policy. Respondent is neither known by, nor authorized to use, Complainant's mark. Respondent does not claim otherwise. Nothing in the record reflects Respondent's use of the Disputed Domain Name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See TVS Motor Company Limited, supra.
C. Registered and Used in Bad Faith
Respondent's conduct in this case demonstrates bad faith registration and use of the Disputed Domain Name within the meaning of paragraph 4(a)(iii) of the Policy.
First, Respondent was undoubtedly well aware of Complainant and had Complainant's HALLIBURTON mark in mind when registering the Disputed Domain Name. Indeed, the confusing similarity between the Disputed Domain Name and a well-known mark make it highly implausible that Respondent's registration of a confusingly similar domain name was not an intentional effort to capitalize on or otherwise take advantage of the likely confusion with Complainant's trademark rights. See Heartland Payment Systems v. Purple Bucquet, WIPO Case No. D2010-0722 (finding it difficult to believe that the similar disputed domain name was "registered for any purpose other than the trademark value of the Complainant's mark, which is recognized as bad faith use under paragraph 4(b)(iv) of the Policy."); Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163 ("it is clear [from] the scheme, [that] Respondent was aware of the Complainant's rights in the [registered trademark], since Respondent fraudulently posed as [Complainant's] employee.").
Second, Respondent appears to have used the Disputed Domain Name to engage in a "phishing" identity theft scheme and fraud upon Complainant and its vendors, by sending emails using the Disputed Domain Name and purporting to be from Complainant. That alone amounts to bad faith. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841 (finding the disputed domain name was both registered and used in bad faith when the disputed domain name was used in a fraud scheme to send email orders immediately following registration to vendors that would appear to come from the Complainant, using the names of Complainant's employees and an email domain name differing by only two letters from the Complainant's domain name); TVS Motor Company Limited, supra(use of disputed domain names to create emails purporting to be email addresses of Complainant's officers is "plainly bad faith"); Beckman Coulter, Inc., supra (finding bad faith when the respondent has used the disputed domain name to set up and email address from which the respondent fraudulently set out equipment requests in the name of complainant, posing as an employee of complainant, and using complainant's registered trademark in an unauthorized matter).
Third, by merely adding the common abbreviation "inc" to the end of Complainant's mark, Respondent has further deliberately suggested that it is, or at least is authorized by, Complainant. Inasmuch as there was no such authorization, and such implied affiliation was used for fraudulent purposes, Respondent's conduct constitutes 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 <halliburtoninc.com> be transferred to the Complainant.
Michael A. Albert
Date: January 11, 2016