WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Subsea 7 Limited v. Andrew Thomasson
Case No. D2018-1253
1. The Parties
The Complainant is Subsea 7 Limited of Surrey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Keltie LLP, United Kingdom.
The Respondent is Andrew Thomasson of Dupage, United States of America.
2. The Domain Name and Registrar
The disputed domain name <subsea7-uk.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2018. On June 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2018, 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 June 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2018.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 20, 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 renders seabed-to-surface engineering construction as well as contractor services to the offshore energy industry. It was first listed in the Oslo Bors Stock Exchange on June 1997 and on February 2018 announced a partnership with OneSubsea, a division Schlumberger.
The Complainant is the owner of several trademark registrations around the world (Annex 2 to the Complaint) amongst which are the following:
- United Kingdom Trademark Registration No. 2304950 for SUBSEA 7, registered on April 21, 2006, in class 42;
- European Union Trademark Registration No. 11426335 for SUBSEA 7, registered on May 13, 2013, in class 42; and
- International Trademark Registration No. 1147789 for SUBSEA 7, registered on December 14, 2012, in class 42.
The disputed domain name is <subsea7-uk.com> and was registered on April 19, 2018. No active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name was registered shortly after the Complainant made on February 22, 2018 and February 23, 2018 a series of high-profile press releases (including world-leading business news outlets such as Forbes and Reuters) announcing the extension of a partnership with OneSubsea, a division of Schlumberger, a New York Stock Exchange listed company.
As to the disputed domain name the Complainant argues that it is virtually identical to its trademark, being the term “-uk” merely descriptive of the Complainant’s core geographic markets and thus unable to distinguish the disputed domain name from the Complainant’s trademark.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name;
(ii) the term SUBSEA 7 is not descriptive in any way, nor does such combination of words and numeral has any generic dictionary meaning;
(iii) the Complainant has not given its consent for the Respondent to use its registered trademark in the registration of the disputed domain name, and
(iv) the disputed domain name is inactive and there is no evidence that the Respondent has made demonstrable preparations to use it in connection with a bona fide offering of goods and services.
Moreover, the Complainant submits that the Respondent is particularly brand-savvy and is in the habit of targeting third party trademarks in a manner that constitutes bad faith according to the Policy, being the owner, according to a Reverse WhoIs report conducted against the Respondent’s email address “janethomas1211@[...]” of 85 domain names that are identical or highly similar to third party trademarks such as <dajmler.com>, <fortnumandmanson.com>, <gap-grovp.com>, <gopro-usa.com>, <groupon-usa.com>, <levi-us.com>, <radissonhctels.com>, <rjmowa.com> and so on (Annex 4 to the Complaint).
Furthermore, the Complainant argues that the disputed domain name is being passively held, preventing the Complainant from using it for legitimate commercial purposes, having the Respondent engaged in bad faith conduct on a professional scale.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain name.
A. Identical or Confusingly Similar
The Complainant has established rights in the SUBSEA 7 trademark, duly registered in various jurisdictions.
The Panel finds that the disputed domain name <subsea7-uk.com> is confusingly similar to the Complainant’s mark, being the suffix “-uk” insufficient to avoid the confusing similarity, not impacting the overall impression of the disputed domain name which is dominated by the Complainant’s trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate a respondent’s rights or legitimate interests in a disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent has not been given permission to use the Complainant’s trademark in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name at the time of the filing of the Complaint, as well as the indication that the Respondent has engaged in a pattern of registering dozens of domain names that relate to third-parties well-known trademarks corroborate with the Panel’s finding of the absence of rights or legitimate interests.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intention to attempt to attract, for commercial gain, Internet users to the website 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 website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident from the choice of the disputed domain name <subsea7-uk.com> which consists of reproducing the Complainant’s strong trademark with the addition of “-uk” which relates to a relevant market for the Complainant, a similar tactic deployed by the Respondent when registering <gopro-usa.com>, <groupon-usa.com>, <levi-us.com>, for instance.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstances which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, three other circumstances of this case further support the Panel’s finding of bad faith:
(i) the Complainant’s trademark is well known;
(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name; and
(iii) the Respondent appears to have engaged in a pattern of bad faith conduct, having registered several other domain names that relate to well-known trademarks.
Taking into account all of the above (as the panel did similarly in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003), it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.
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 <subsea7-uk.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: August 3, 2018