WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Crescent Point Energy Corp. v. Adex Adex
Case No. D2017-1980
1. The Parties
The Complainant is Crescent Point Energy Corp. of Calgary, Alberta, Canada, represented by Norton Rose Fulbright LLP, Canada.
The Respondent is Adex Adex of Ohio, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <crescent-pointenergy.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2017. On October 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 14, 2017, 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 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 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
The Complainant is a light and medium oil producer based in Calgary, Alberta, Canada. It was founded in 2001 and provides various goods and services relating to the production and exploitation of oil under its business name and abbreviations, including the words “Crescent Point” and “Crescent Point Energy” (the “CRESCENT POINT ENERGY Mark”). The Complainant was first listed on the Toronto Stock Exchange in 2001 and since 2001 its oil and gas production has increased from 275 barrels of oil equivalent per day to 174,500 barrels of oil equivalent per day. It has operated its website (“the Complainant’s Website”) from “www.crescentpointenergy.com” since 2002 and advertises its goods and services through its website and through presentations, conferences and brochures.
The Domain Name <crescent-pointenergy.com> was created on April 26, 2017. It currently resolves to a website (“the Respondent’s Website”), that is a near-identical copy of the Complainant’s website, with slightly different contact details.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s CRESCENT POINT ENERGY Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of common law rights in trademarks derived from its name, including the CRESCENT POINT ENERGY Mark. In its 16 years of trading it has developed substantial goodwill and reputation for its business and services under the CRESCENT POINT ENERGY Mark. Its goods and services have been publically advertised in Canada since 2002, including through the Complainant’s Website, brochures, presentations and conferences and media coverage. The Domain Name consists of the CRESCENT POINT ENERGY Mark in its entirety with the addition of a hyphen between “crescent” and “pointenergy” which does not serve to distinguish the Domain Name from the CRESCENT POINT ENERGY Mark.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the CRESCENT POINT ENERGY Mark or any related mark for any purpose. There is no noncommercial use of the Domain Name. The Domain Name is used by the Respondent to operate a website that displays a nearly identical copy of the Complainant’s Website for which the Respondent has not been authorized to do. This use operates to disrupt the Complainant’s business and does not amount to a bona fide offering of goods and services from the Domain Name.
Given the use of the Domain Name to resolve to a website that is a copy of the Complainant’s Website, it is inconceivable that the Respondent registered the Domain Name unaware of the Complainant’s name, marks and reputation. Based on review of previous UDRP decisions, it appears that the Respondent has engaged in a pattern of conduct of improperly registering and using domain names which incorporate other brand owner’s marks. See Comerica Bank v. Adex Adex, WIPO Case No. D2016-1736 and Comerica Bank v. Adex Adex, WIPO Case No. D2016-1438. In those cases the Respondent operated a website that was a near copy of the particular complainant’s website. The likely purpose of the Respondent’s conduct is to operate illegal phishing attacks. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant does not own a registered trademark for the CRESCENT POINT ENERGY Mark. It has applied for various marks consisting of or containing the words “crescent point” but the registrations have not yet been approved. It is therefore necessary for it to show that it has common law or unregistered trademark rights in the CRESCENT POINT ENERGY Mark.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) records, in response to the question “1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?” that:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning…”
In the present case the Complainant has provided evidence that it has traded under the CRESCENT POINT ENERGY Mark since 2001, has had a presence on the Toronto Stock Exchange since that year, and has a large and growing oil extraction business. It has also provided evidence of the use of the CRESCENT POINT ENERGY Mark on various presentations, brochures and in respect of varying conferences. While the Complainant has engaged in little or no advertising targeted at the broader consumer market, it has promoted its goods and services under the CRESCENT POINT ENERGY Mark to consumers and potential consumers of its own specialist goods and services. The Panel considers that by reason of the Complainant’s 16 years of trading under the CRESCENT POINT ENERGY Mark, the considerable sales made under the CRESCENT POINT ENERGY Mark and the promotional efforts made by the Complainant using the CRESCENT POINT ENERGY Mark to its specialist market, the CRESCENT POINT ENERGY Mark has become a distinctive identifier associated with the Complainant’s oil and gas-related goods and services. This is sufficient to show that it has unregistered rights in the CRESCENT POINT ENERGY Mark for purposes of the Policy.
The Domain Name consists of the CRESCENT POINT ENERGY Mark with a hyphen between “crescent” and “pointenergy.com”. Disregarding the generic Top-Level Domain (“gTLD”) “.com” for the purposes of comparison and noting that the hyphen does not distinguish the Domain Name from the CRESCENT POINT ENERGY Mark, the Panel finds that the Domain Name is confusingly similar to the Complainant’s CRESCENT POINT ENERGY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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 (Policy, paragraph 4(c)).”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CRESCENT POINT ENERGY Mark or a mark similar to the CRESCENT POINT ENERGY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, indeed the Respondent has simply linked the Domain Name to a site that is almost identical to the Complainant’s Website. Such use, by itself does not grant rights or legitimate interests.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’s registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent was aware of the Complainant and its reputation in the CRESCENT POINT ENERGY Mark at the time of the Domain Name was registered. The Respondent’s Website reproduces the Complainant’s Website almost exactly and operates from a domain name that is almost identical to the domain name that the Complainant’s Website is located.
The WIPO Overview 3.0 records, in response to the question “3.1.2 What constitutes a pattern of conduct of preventing a trademark holder from reflecting its mark in a domain name?” that:
“UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration.
This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner.
A pattern of abuse has also been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners…”
Given the use of the Domain Name to redirect to a website that is almost identical to the Complainant’s Website the Panel finds that the Respondent registered the Domain Name in order to prevent the Complainant from reflecting its CRESCENT POINT ENERGY Mark in a corresponding domain name. As illustrated in the cases referred to in the Complainant, Comerica Bank v.Adex Adex, WIPO Case No. D2016-1736 and Comerica Bank v. Adex Adex, WIPO Case No. D2016-1438, the Respondent has engaged in pattern of registering domain names closely corresponding with the names of large commercial enterprises and redirecting them to websites that closely resemble the websites of those commercial enterprises. This evidence is sufficient to show a pattern of conduct in registering domain names in order to prevent trademark holders from reflecting their marks in a corresponding domain names and potentially using them in connection with fraudulent activities. The Policy, paragraph 4(b)(ii), provides that this circumstance is evidence of registration and use of a domain name in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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 <crescent-pointenergy.com> be transferred to the Complainant.
Date: December 1, 2017