WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Petrofac Services Limited v. Petrofac Qatar WLL
Case No. D2016-0388
1. The Parties
Complainant is Petrofac Services Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bond Dickinson LLP, United Kingdom.
Respondent is Petrofac Qatar WLL of Doha, Qatar, represented by Kochery & Partners LLP, Qatar.
2. The Domain Name and Registrar
The disputed domain name <petrofac-qatar.com> (the “Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2016. On February 26, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On February 27, 2016, the Registrar transmitted by e-mail 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2016. An automatic extension of the Response due date was granted by the Center on March 29, 2016. The Response was filed with the Center on April 1, 2016.
The Center appointed Robert A. Badgley, Mohamed-Hossam Loutfi and Michael D. Cover as panelists in this matter on May 5, 2016. The Panel finds that it was properly constituted. Each member of 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
According to the Complaint, Complainant is a subsidiary of Petrofac Limited, a “provider of oilfield pipeline, training and other services to the international oil and gas industry with particular focus in the [United Kingdom], the Middle East and South East Asia”. In 2014, the global revenue of Complainant and its affiliates was USD 6.2 billion.
Complainant alleges that it has “had a presence in Sharjah in the United Arab Emirates since 1991 as an engineering, procurement and construction business”. Complainant adds that it has had a presence in Qatar, Respondent’s country, since 1998, when it “developed a successful business” in the oil and gas sector.
Since 1981, Complainant and its affiliates have traded under the trade name and trademark PETROFAC. The PETROFAC mark is registered in various international jurisdictions, including a registration in the United Kingdom on April 29, 2005. The PETROFAC mark has been registered in Qatar since May 26, 2005. Complainant avers that the mark PETROFAC is an “invented brand”.
Complainant has held the registration of the domain name <petrofac.com> since January 21, 1997 and uses that domain name for a website promoting its business.
According to the Response, Respondent is a “full-fledged Qatari Company, registered at the Ministry of Economy and Trade” on June 14, 1997. Since that time, Respondent claims, it has been involved in “Stocking & Supply of Industrial Materials as the Authorized Distributor / Agent for world renowned Manufacturers to cater to the requirements of Infrastructure and Oil and Gas Industry”. Respondent states that, under Qatari law, it could not have adopted “Petrofac Qatar WLL” as its business name if the government had perceived the existence of any identical or similar name which might cause confusion. Respondent adds that its corporate headquarters are located in the Qatar Petrofac Building in Doha (Respondent states that “the building is named after the trade name of the company: Petrofac Qatar Building”).
Respondent asserts that it has “high visibility and strong prominence in the Qatari market” and that it has had a “regular participation into all major trade exhibitions in Qatar for [the] last 18 years”. In 2012, Respondent was nominated to receive the “European Assembly Award for Business Excellence”.
According to Respondent, it chose the trade name Petrofac Qatar because it suggests the term “petrol” (oil) and the “fac” component “denotes the industrial environment in which we operate (i.e., factory, manufacturer, facilitator)”. Respondent also notes that several business competitors in Qatar have adopted similarly inspired trade names, such as Petrotec, Petromech, Petroserv, Petrogulf, and Petrotech.
The Domain Name was registered on January 29, 2005. The Domain Name resolves to a well-developed website featuring Respondent’s various activities within the Qatar oil and gas industry. The “About Us” section near the top of the home page states:
“Petrofac Qatar is a Qatar based Company catering to the needs of the Oil & Gas, Petrochemicals, Infrastructure and Construction Industries.
At Petrofac Qatar, we offer Engineering equipments, supplies and value added services with the help of world-renowned & approved brands and a team of professionally qualified & dedicated individuals.
Petrofac Qatar’s state-of-the-art Stocking, Testing & Repair facilities enables us to meet our clients urgent & shut down requirements effectively. Today, we are a preferred vendor for all the local and International Oil & Gas and Construction companies in Qatar.”
In 2009, Complainant brought a lawsuit in the Qatari Court of First Instance against Respondent in which Complainant sought the “radiation” (Respondent’s term) of Respondent’s trade name Petrofac Qatar WWL from the Registry of the Ministry of Economy and Trade (the “Qatar company registry”). The Court of First Instance rejected Complainant’s lawsuit in 2013. The Qatari Court of Appeal subsequently affirmed the dismissal of Complainant’s lawsuit. These prior judicial proceedings between the Parties were not mentioned at all in the Complaint.
Meanwhile, on June 16, 2010, according to materials annexed to the Response, the general manager of Complainant’s Machinery Services group sent Respondent’s CEO an e-mail in which Complainant wrote:
“[…] I was given your name by one of my colleagues, from our Metering group, who suggested that I might make contact with you to introduce our services.
Petrofac have, within the OEO group, extensive experience of Metering within the oil & gas industry and would welcome the opportunity to discuss our expertise, skills and services with you in further detail.
We now have the Petrofac Metering Group, SGC Metering (a recent acquisition) and Petrofac Mechanical Services working closely together to deliver consultancy through to full metering skid delivery and on site services from within Petrofac group.
It has come to our attention, via industry sources, that you are currently seeking the services of Metering company, for a customer in Qatar, and I would welcome the opportunity to discuss your requirements with you.
I will try to contact you tomorrow to discuss your requirements further, however, please do not hesitate to contact me should you wish to discuss without delay. […]”
At some point in late 2012 (the record suggests November 2012), the Parties were in direct discussions about the possible sale by Respondent of the Domain Name and the trade name “Petrofac Qatar” and associated goodwill. The last communication in the record was a February 14, 2013 e-mail from Respondent’s CEO to Complainant’s project manager. In that e-mail, Respondent wrote:
“[…] Sorry for the delay in replying to you as I was away for few days on business. Further to our discussion on the above mentioned subject, I would like to advise you as follows.
Since our startup from 1997 until now we spent lot of our time, money and efforts to establish our name in Qatar. Today, we are an approved vendor as Petrofac Qatar with all major companies and government organisations in Qatar and have Agency agreement in the same name with many reputed manufacturers across the Globe. It is hurting to change the name of the well-established name of an organization after 16 years of successful operation and it will take many years to establish any new name. However, we will think of that option considering your request provided you compensate us suitably.
In view of the above, we are willing to change our name with a compensation of USD 3 Million towards the past expenses incurred for the establishment, the future branding expenses and the impending loss which will incur due to the ignorance of the new name.
We hope you will agree with our proposal and look forward to hear from you soon to proceed further. […]”
5. Parties’ Contentions
Complainant maintains that it has fulfilled all three elements required under the Policy for a transfer of the Domain Name.
Respondent argues that it has every right to the Domain Name, which reflects Respondent’s legitimate business and trade name in Qatar. Respondent asserts that “Petrofac Qatar WLL is deeply rooted in the Qatari business landscape while Petrofac International Ltd [by which Respondent means to refer to Complainant] is registered in Qatar as a branch of a foreign company incorporated at Jersey Island, subsequent to the registration of Respondent’s company”.
Respondent also asserts that, while both of the Parties to this proceeding operate in the “oil and gas” sector, that sector “is very vast” and that many firms operate in the sector “in different stages […] without having necessarily any similar or identical activity unless related to the hydrocarbon or fossil fuels activity”. According to Respondent, “the activities of the Complainant and of the Respondent are entirely different and have never been into competition”.
Respondent denies having had knowledge of Complainant or its PETROFAC mark at the time it registered the Domain Name. Rather, Respondent chose “Petrofac” for the reasons described earlier (associations of petrol and manufacturing) and chose the second word “Qatar” because “all national Qatari enterprises receive continuous encouragement and backing from the Government.”
Respondent also asserts that Complainant has misleadingly omitted from the Complaint any discussion of the previous lawsuit in the Qatar courts in which Complainant’s bid to strip Respondent of the trade name “Petrofac Qatar” was rejected. Respondent also states that it is misleading for Complainant to suggest that Respondent’s USD 3 million offer was related only to the Domain Name. Rather, Respondent notes, the USD 3 million figure was intended to cover Respondent’s entire goodwill developed over more than a decade and the corresponding cost to replace that established trade name with a viable new name and develop its goodwill.
Finally, Respondent argues that too much time has passed since Complainant was first aware of the Domain Name and Respondent’s use of it, and that this passage of time should result in the denial of the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that Complainant holds rights in the mark PETROFAC, through registration and use. The Panel further concludes that the Domain Name is confusingly similar to the PETROFAC mark, as it incorporates that mark in its entirety and merely adds the geographically descriptive proper noun “Qatar”.
Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Without expressly invoking paragraphs 4(c)(i) and 4(c)(ii) of the Policy, Respondent appears to claim a legitimate interest under both of these provisions. Respondent asserts that it has been using the trade name Petrofac Qatar for more than a decade to operate a legitimate business in Qatar, and the Domain Name it registered back in 2005 fits appropriately with that legitimate business. Respondent also impliedly asserts that it has become commonly known by the Domain Name inasmuch as its trade name has become well-established within Qatar (and Respondent’s nomination for a European business award in 2012 supports the proposition that Respondent has become well-known).
The Panel concludes that the record in this case provides enough support to rebut Complainant’s contention that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent duly applied for and obtained a company registration under the name “Petrofac Qatar” from the government of Qatar, and Respondent has operated a business and traded under that name for more than a decade. The record shows that at one point (June 2010) Complainant even approached Respondent about exploring business opportunities. If Respondent were some wholly illegitimate enterprise whose chief aim was to siphon business from Complainant through the deceptive appropriation of Complainant’s trademark, it is hard to imagine that Complainant would have approached Respondent in order to pitch to the latter its “metering” services. The Panel has also taken into account that UDRP panels have recognized that a delay in bringing a complaint, as in this case between the registration of the Domain Name in 2005 and the filing of the Complaint in February 2016, while not fatal to the Complainant, may make it more difficult for the Complainant to establish its case on the merits, particularly with regard to the second and third elements of the Policy.
The Panel finds on this record that Respondent has rights or legitimate interests in respect of the Domain Name. Complainant has not established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Because of the Panel’s conclusion under the “rights or legitimate interests” head, it is not necessary to address the “bad faith” issue. The Panel makes two observations, however.
The first is that the circumstances of this dispute may give rise to a legitimate trademark infringement lawsuit in some forum (about which the Panel would express no view as to the merits), but these circumstances do not present a clear case of cybersquatting. The scope of the Policy extends to abusive registration and use of a domain name, not to legitimate business or trademark disputes about which reasonable minds could differ (and which would in any event require the development of a much richer factual record than is generally possible within the streamlined procedures employed under the Policy).
The second is that, in relation to February 14, 2013 e-mail from Respondent to Complainant, apparently expressing a willingness to transfer the Domain Name to Complainant for a consideration of USD 3 million, the Panel notes that 4(b)(i) of the Policy refers to consideration in excess of documented out-of-pocket costs directly related to the Domain Name and that USD million are likely to be very considerably in excess of that. However, the Panel also notes that 4(b)(i) requires that, in order to fall within that paragraph, the acquisition of the Domain Name would have to be “primarilyfor the purpose of selling” the Domain Name to Complainant, and there is no evidence of this in the record. Moreover, the USD 3 million figure apparently included the transfer of Respondent’s trade name and associated goodwill, not merely the Domain Name.
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Michael D. Cover
Date: May 19, 2016