WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saudi Arabian Oil Co. v. Identity Protect Limited / Joe Lewis, Flashpoint Marketing
Case No. D2018-0907
1. The Parties
The Complainant is Saudi Arabian Oil Co. of Dhahran, Saudi Arabia, represented by Fish & Richardson P.C., United States of America ("United States").
The Respondent is Identity Protect Limited of Hayes, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Joe Lewis, Flashpoint Marketing of Birmingham, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <aramcoiposhares.com>, <buyaramcoshares.com>, <buysaudiaramcoiposhares.com>, <buysaudiaramcoshares.com>, <howdoibuyaramcoshares.com>, <howdoibuysaudiaramcoshares.com>, <howtobuysaudiaramcoshares.com>, <howtobuysharesinaramco.com>, <howtobuysharesinsaudiaramco.com>, <howtoinvestinaramcoipo.com>, <howtoinvestinsaudiaramco.com>, <informationonsaudiaramco.com>, <saudiaramcobroker.com>, <saudiaramcoiposhares.com> and <saudiaramcoshareprice.com> (the "Domain Names") are registered with 123-Reg Limited (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 24, 2018. On April 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 4, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on May 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response, but did submit two email communications on May 2 and 3, 2018 requesting more information about the proceeding. Accordingly, the Center notified the Respondent's default on June 1, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on June 5, 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 Complainant was founded in 1933 and is among the largest oil companies in the world. Based in Dhahran, Saudi Arabia, the Complainant is expected to have a market capitalization of USD 1 trillion to USD 1.5 trillion when it sells shares in 2018. The Complainant has an upcoming initial public offering. The Complainant runs operations in the United States and internationally, with subsidiaries and affiliates in the United Arab Emirates, the United States, China, Egypt, India, Japan, the Netherlands, Singapore, the Republic of Korea and the United Kingdom.
The Complainant owns the United States Registration No. 4,541,437 for the ARAMCO trademark, registered on June 3, 2014. The Complainant also owns numerous other registrations and applications for the ARAMCO and SAUDI ARAMCO trademarks throughout the world, such as the European Union Registration No. 012676045, registered on August 15, 2014 and the European Union Registration No. 000918581, registered on December 1, 1999.
The Complainant is the owner of the <aramco.com> domain name, which was registered on January 27, 1994. The Complainant has used "www.aramco.com" as the official website.
The Domain Names were registered on October 13, 2017 and they resolve to a hosting parking website.
5. Parties' Contentions
The Complainant provides trademark registrations and submits that its trademark is well-known. The Complainant argues that the Domain Names are identical to the Complainant's trademark, with the mere addition of descriptive and/or common terms and the generic top-level domain ("gTLD") ".com". The addition of generic terms such as "shares," "price," "buy," "invest," and "how to" to the Domain Names fails to alleviate confusion or distinguish the Domain Names from the Complainant's trademark.
The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant's trademark. The Respondent has no prior rights or legitimate interests in the Domain Names. The Respondent is not making a fair or legitimate noncommercial use of the Domain Names.
As to bad faith, the Complainant argues that the Respondent was aware of the Complainant when it registered the Domain Names. The Complainant's trademark is famous. Moreover, the timing of the registration of the Domain Names, before the Complainant's upcoming initial public offering, indicates knowledge of the Complainant and its trademark. Moreover, the Respondent has registered at least fifteen domain names incorporating the Complainant's trademarks. This also indicates bad faith. Likewise, the fact that the Respondent is not making active use of the Domain Names – each of the Domain Names resolves to a parked webpage displaying an advertisement for the Registrar – and the Respondent has failed to respond to the Complainant's cease-and-desist letter.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademarks ARAMCO and SAUDI ARAMCO.
The test for confusing similarity involves the comparison between the trademark and the domain name. In this case, the Domain Names are confusingly similar to the Complainant's trademark. The addition of generic terms such as "shares," "broker," "buy," "invest," and "how to" to the Domain Names does not provide sufficient distinction from the Complainant's mark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD ".com", see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register domain names containing its trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To this Panel it is more likely than not that the Respondent knew of the Complainant's trademarks and its business when the Respondent registered the Domain Names, in particular taking into account that the Complainant's trademark is well-known and the timing of the registration shortly after press coverage.
The Respondent has registered several domain names incorporating the Complainant's trademarks. This indicates bad faith. Moreover, the Domain Names resolve to a parked webpage displaying an advertisement for the Registrar, the Respondent has failed to respond to the Complainant's cease-and-desist letter and the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of 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 Names <aramcoiposhares.com>, <buyaramcoshares.com>, <buysaudiaramcoiposhares.com>, <buysaudiaramcoshares.com>, <howdoibuyaramcoshares.com>, <howdoibuysaudiaramcoshares.com>, <howtobuysaudiaramcoshares.com>, <howtobuysharesinaramco.com>, <howtobuysharesinsaudiaramco.com>, <howtoinvestinaramcoipo.com>, <howtoinvestinsaudiaramco.com>, <informationonsaudiaramco.com>, <saudiaramcobroker.com>, <saudiaramcoiposhares.com> and <saudiaramcoshareprice.com> be transferred to the Complainant.
Date: June 7, 2018