WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
REPSOL, S.A. and REPSOL OIL & GAS CANADA INC v. WhoisGuard Protected, WhoisGuard, Inc. / Repsol Oil, Repsol
Case No. D2017-2424
1. The Parties
The Complainants are REPSOL, S.A. of Madrid, Spain and REPSOL OIL & GAS CANADA INC of Calgary, Canada, represented by Herrero & Asociados, Spain.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Repsol Oil, Repsol of New Jersey, Texas, United States of America ("US").
2. The Domain Names and Registrar
The disputed domain names <repsoloilca.com> and <repsoloilcanada.com> (the "Disputed Domain Names") are registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 7, 2017. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 7, 2017, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to the Complainants on December 15, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants did not file an amendment to the Complaint or an amended Complaint.
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 January 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on February 13, 2018. 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 Complainants are a Spanish corporation and its Canadian subsidiary. For practical purposes there is no need to distinguish between them, and hereinafter they will be referred to as the "Complainant". The Complainant is one of the top ten global petroleum corporations carrying on exploration, production, refining, distribution and marketing of its petroleum products in many parts of the world, including Canada. The Complainant has been advertising and selling its motor, transmission, brake and other oils in Canada since at least the 1990's in association with the trademark REPSOL. The Complainant is the owner of numerous trademark registrations for the term REPSOL either as a word mark or as the prominent part of a device mark (for example European Union Trademark Registration Number 889634, registered on March 26, 2001, and Canadian trademark Number 781991, registered on November 9, 2010). These are referred to collectively in this decision as the "REPSOL Trademark".
The Complainant also owns numerous domain names which include the term REPSOL including <repsolcanada.com> and <repsolca.com>.
The Respondent registered <repsoloilcanada.com> on May 25, 2017, and <repsoloilca.com> on July 24, 2017.
The Disputed Domain Name <repsoloilcanada.com> does not resolve to an active website, while the Disputed Domain Name <repsoloilca.com> resolves to a website with pay-per-click links. Evidence filed by the Complainant which has not been disputed shows that the Disputed Domain Names have been used for e-mail addresses which have been used to make fraudulent offers of employment to persons interested in obtaining employment with the Complainant. The Panel does not think it necessary to set out the detail of this evidence as it contains confidential personal information.
Information disclosed by the Registrar shows that the name and contact details the Respondent used when registering the Disputed Domain Names were those of the Complainant itself. It had no authority to do so.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows.
The Disputed Domain Names are each similar to the REPSOL Trademark.
The Respondent has no rights or legitimate interests in the term "REPSOL". The Complainant says that term has no other meaning other than in relation to itself and its services.
In consequence the Complainant alleges that the Disputed Domain Names were registered and are being used in bad faith. The Complainant says the use of the Disputed Domain Names in fraudulent e-mails which impersonate the Complainant is clear evidence of bad faith, as is the fact that the Respondent has provided false contact details.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one of the named Respondents (WhoIsGuard Protected, WhoIsGuard, Inc.) appears to be a privacy or proxy registration service. It disclosed details of contact details given by the Respondent when registering the Disputed Domain Names but those are manifestly false, being details of the Complainant's own US subsidiary. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at Section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent".
In the present case the Panel finds the substantive Respondent to be the unknown person who registered the Disputed Domain Names – and references to the Respondent should be understood as including that person as well as the Respondent of record. The Panel is satisfied that this person is the proper Respondent for each of the Disputed Domain Names – similarities between e-mails using each of the Disputed Domain Names which have been placed in evidence clearly give rise to an inference that each was registered and is being used by the same unknown person. References to the Respondent should not be understood to include Repsol Oil, Repsol of New Jersey, Texas, US as its details were added to the WhoIs information without authorization by the unknown person who is the substantive Respondent.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Disputed Domain Names that:
(i) The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The 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 finds that the Complainant has rights in the REPSOL Trademark.
The Disputed Domain Names are each confusingly similar to the REPSOL Trademark. They simply involve that trademark combined with the generic word "oil" and either a geographic designation ("Canada") or an abbreviation for that designation ("ca"). Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant's trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in each of the Disputed Domain Names:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the REPSOL Trademark. The Complainant has prior rights in the REPSOL Trademark which precede the Respondent's registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Names. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The evidence filed by the Complainant clearly establishes that the Respondent has used the Disputed Domain Names in connection with e-mails which impersonate the Complainant and which are being used as part of some form of dishonest and fraudulent scheme to obtain information from persons who believe they are being offered the potential opportunity to obtain employment with the Complainant. The e-mails concerned are clearly part of a deliberate attempt to impersonate the Complainant. It seems likely this is intended to obtain data which can then in all probability be used in further dishonest or fraudulent activity. See Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why "phishing" activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de C.V. v inbuirsa, WIPO Case No. D2006-0614 to similar effect.
The Panel is further reinforced in this view by the fact that the Respondent has concealed its identity and its contact details are clearly false – see for example Salomon Smith Barney Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668 ("The Panel bases its determination on the fact that Respondent has taken steps to conceal its true identity, by operating under a name that is not a registered business name and by actively provided false contact details…").
In addition, the Respondent has been given an opportunity to provide any legitimate explanation it may have as to its activities. Again, based on the evidence provided by the Complainant, the burden of production in this respect is shifted to the Respondent. The Panel finds that the Respondent has failed to produce any evidence to establish a good faith registration and use of the Disputed Domain Names.
Accordingly the Panel finds that the Disputed Domain Names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <repsoloilca.com> and <repsoloilcanada.com>, be transferred to the Complainant.
Nick J. Gardner
Date: February 27, 2018