WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gas Natural SDG, S.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Hafiz Mujtaba
Case No. D2018-0312
1. The Parties
Complainant is Gas Natural SDG, S.A. of Barcelona, Spain, represented by Herrero & Asociados, Spain.
Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Hafiz Mujtaba of Multan, Punjab, Pakistan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <gas-naturalfenosa.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2018. On February 13, 2018, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2018, the Registrar transmitted by e-mail 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 e-mail communication to Complainant on February 15, 2018, 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 February 19, 2018.
On February 25, 2018, Respondent sent a communication to the Center.
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 February 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2018. The Center notified the Parties it was proceeding to Panel Appointment on March 20, 2018.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on March 29, 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
Complainant is a multinational organization operating in the natural gas field, including in the exploration, production, liquefaction, and transport of gas. Complainant is based in Spain, and since at least 2009, it has been known as Gas Natural Fenosa. Complainant operates in more than 30 countries worldwide, including Argentina, Australia, Belgium, Brazil, Colombia, Chile, Dominican Republic, Guatemala, Germany, Mexico, Oman, Portugal, Spain, and South Africa. Complainant has an international registration for its GAS NATURAL FENOSA mark (No. 1060941), registered on October 8, 2010, and has also registered the mark in various countries, including in Spain (No. 2925498), Mexico (No. 1253735), Colombia (No. 424857), and Brazil (No. 903046539), and in the European Union (No. 009202615). In addition, Complainant owns various domain names incorporating its GAS NATURAL FENOSA mark, such as <gasnatural-fenosa.com> and <gasnaturalfenosa.com>.
Respondent is a web developer in Pakistan. Respondent registered the disputed domain name
<gas-naturalfenosa.com> on January 15, 2018. The disputed domain name resolves to a website which displays an error message and has no other content.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is identical to the trademark GAS NATURAL FENOSA in which Complainant has rights. Complainant argues that Respondent lacks rights or a legitimate interest in the disputed domain name because Respondent has not used the disputed domain name for any legitimate activity, Respondent is not known by the disputed domain name, and there is no evidence that Respondent is preparing to make a legitimate noncommercial or fair use of the disputed domain name. Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith because Respondent: (i) registered the disputed domain name with full awareness of Complainant’s rights in its well-known mark – as evidenced by Respondent’s adoption of the mark in its entirety – eight years after Complainant first international registration of the mark, (ii) failed to make a good faith use of the disputed domain name, (iii) took steps to conceal his identity by using a privacy guard, and (iv) failed to provide a plausible actual or contemplated good faith use of the disputed domain name.
In an e-mail communication to the Center, Respondent maintained that he registered the disputed domain name for a “client requirement” in Pakistan and did not know at the time that it was an “exact match” with Complainant’s trademark. According to Respondent, he simply registered the disputed domain name because it was publicly available.
6. Discussion and Findings
A. Identical or Confusingly Similar
In view of Complainant’s trademark registration, the Panel finds that Complainant has rights in the mark GAS NATURAL FENOSA. The disputed domain name incorporates the mark in its entirety and the addition of the hyphen does nothing to dispel the confusing similarity.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant shows that it has long held rights in its well-known GAS NATURAL FENOSA mark and that it has not licensed Respondent to use the mark. While Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name, Respondent has failed to offer evidence in rebuttal. Respondent has provided no evidence to indicate that he has made or plans to make a bona fide use of the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. Neither Respondent nor his web development company (Techlogic) are known by the disputed domain name.
The Panel thus finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith. Although the disputed domain name does not resolve to an active website, this does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 3.3. In the case of a passive holding, the following factors are relevant to a determination of bad faith: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” WIPO Overview 3.0 section 3.3.
Complainant’s mark is distinctive and enjoys a worldwide reputation. The Panel finds Respondent was aware of the GAS NATURAL FENOSA mark and Complainant’s rights in the mark as evidenced by Respondent’s registration of the disputed domain name that adopted the mark in its entirety. Respondent offers no plausible good faith explanation for his combination of the distinctive term “fenosa” and “gas-natural,” Respondent’s assertion that he was not aware of Complainant’s trademark rights is not plausible. Respondent’s assertion that he registered the disputed domain name for a “client requirement” is equally implausible. Not only does Respondent fail to identify the client, it is difficult to conceive of a scenario under which an entity, excluding Complainant, would require the disputed domain name for a good faith use. Respondent’s lack of candor regarding his awareness of Complainant’s rights and his reason for registering the disputed domain name underscores the Panel’s finding of 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 <gas-naturalfenosa.com> be transferred to Complainant.
Lawrence K. Nodine
Date: April 12, 2018