WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Downhole Technology, LLC v. Dharshinee Naidu
Case No. D2017-0817
1. The Parties
Complainant is Downhole Technology, LLC of Houston, Texas, United States of America ("United States"), represented by Rao DeBoer Osterrieder, PLLC, United States.
Respondent is Dharshinee Naidu of New York City, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <downholetechnology.net> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 23, 2017. On April 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 25, 2017, the Registrar transmitted by email 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 April 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 17, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 24, 2017. 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
Complainant holds a registered trademark with the United States Patent and Trademark Office ("USPTO") for DOWNHOLE TECHNOLOGY with Registration No. 4713666 in connection with "oil and gas well equipment, namely, bridge plugs and fracturing plugs...". The mark was first used in commerce on November 1, 2014 and registered on March 31, 2015.
Little is known about Respondent, who did not respond to the Complaint. The Domain Name was registered on December 2, 2015, and it redirects to a website, namely "www.wn.com", with various links to
technology-related sites, and it features a photo of a "Boss Hog" plug. The site also contains some content which may be interpreted as suggesting a link between Complainant and the "Klan" (widely understood to refer to the hate group known as the Ku Klux Klan).
5. Parties' Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
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
The Panel concludes that Complainant has rights in the mark DOWNHOLE TECHNOLOGY, through registration and use demonstrated in the record. The Panel further concludes that the Domain Name is identical to the DOWNHOLE TECHNOLOGY mark.
Complainant has established Policy paragraph 4(a)(i).
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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not rebutted Complainant's prima facie showing and has not come forward with any explanation why he registered the Domain Name, which is identical to Complainant's trademark, and why the Domain Names redirects to a website containing various hyperlinks and content suggesting an affiliation between Complainant and the Ku Klux Klan.
Complainant has 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 online 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.
The Panel concludes that the Domain Name was registered and is being used in bad faith. It is clear that Respondent had Complainant's mark in mind, since the website refers to a type of plug apparently similar to the plug manufactured by Complainant. It is not known from the record whether any of the "related links" provided at Respondent's website are commercial in nature. In any event, Respondent has not come forward to explain why he has set up a website that disparages Complainant. Respondent does not claim to be exercising his rights of free speech. Rather, the Panel is left with the impression that Respondent simply wants to disparage Complainant, whether from commercial motives or otherwise.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), tarnishment can form the basis for a finding of bad faith. The WIPO Jurisprudential Overview 3.0 states, in paragraph 3.12:
"Noting that noncommercial fair use without intent to tarnish a complainant's mark is a defense under the second element, using a domain name to tarnish a complainant's mark (e.g., by posting false or defamatory content, including for commercial purposes) may constitute evidence of a respondent's bad faith."
On the record of this case, the Panel concludes that Respondent's sole motivation for registering the Domain Name was to disparage Complainant and tarnish Complainant's mark, with no explanation of a legitimate motive.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <downholetechnology.net> be transferred to Complainant.
Robert A. Badgley
Date: June 1, 2017