WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Suncor Energy Inc. v. Luciano Didiodato
Case No. D2018-1268
1. The Parties
The Complainant is Suncor Energy Inc. of Calgary, Alberta, Canada, represented internally.
The Respondent is Luciano Didiodato of Hamilton, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <petrocanada.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2018. On June 7, 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 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2018.
The Center appointed J. Nelson Landry as the sole panelist in this matter on July 12, 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 is one of Canada’s largest oil and gas companies in the sectors of the oil and gas industry providing world class petroleum products and services, both in Canada as well at the international level. The Complainant’s predecessor, Petro-Canada, was created by the Canadian government in 1975 as a crown corporation and was privatized in 1990. Petro-Canada, in 1985, acquired part of Gulf Canada Ltd. thus providing more than 4,000 Petro-Canada branded sites. On August 1, 2009, Suncor Energy Inc. and Petro-Canada merged to form the Complainant Suncor Energy Inc. thereby making the Complainant the second largest oil gas company in Canada and in the fifth in North America. The Complainant operates a network of more than 1,500 retail gas stations and over 300 truck stop facilities across Canada still branded Petro-Canada. The said stations and truck stops are in operation under the PETRO-CANADA, PETRO-CANADA & Half Maple Leaf Design and PETRO POINTS & PETRO CANADA trademarks.
The Complainant owns the PETRO-CANADA trademark registered in 33 countries around the world and also in the European Union which includes 28 countries. The trademark PETRO-CANADA as a word mark or within a logo design was registered as recorded in the following table, in association with petroleum fuels and products, automotive parts and related products. (Herein the “PETRO-CANADA Trademarks”).
Reg. No. 354921, registered since April 21, 1989
Reg. No. 352720, registered since March 3, 1989
Reg. No. 352719, registered since March 3, 1989
Reg. No. 372378, registered since August 24, 1990
Reg. No. 393165, registered since January 24, 1992
Reg. No. 539074, registered since January 2, 2001
The Complainant also owns the domain name <petro-canada.com> since June 6, 1996.
The disputed domain name was registered by the Respondent on November 27, 1999, and resolves to a website displaying pay-per-click ads related to the Complainant.
On two separate occasions, the Complainant attempted to contact the Respondent requesting the transfer of the disputed domain name and has not received a response. A first attempt was made by letter dated March 19, 2013. A second letter dated March 21, 2018 was sent, this time via mail and email to the registrant email address listed in the WhoIs information for the Respondent. The email came back with the mention that the email is “undeliverable”. The WhoIs information for the disputed domain name also provides an admin email and tech email; a copy of the March 21, 2018 letter was also sent to the admin and tech email address and was returned as “undeliverable”.
The Respondent’s address is listed as being in the city of Hamilton, Ontario where there are eight retail gas stations and two truck stops operated under the PETRO-CANADA Trademark, where the population is 536,917. These are part of a total of 542 branded stations and truck stops in the province of Ontario where the Complainant has been present since early 1990. The Respondent’s address is located on the same street as one of the Complainant’s PETRO-CANADA retail gas station in Hamilton, Ontario, only a two minute drive from the address of the Respondent, in Hamilton.
5. Parties’ Contentions
The Complainant represents that the disputed domain name is identical or confusingly similar to the PETRO-CANADA Trademark and the <petro-canada.com> domain name in which the Complainant has rights, other than the omission of the hyphen between the terms “petro” and “Canada”. The PETRO-CANADA Trademarks’ uses and registrations substantially predate the registration of the disputed domain name registered in 1999.
The Complainant further represents that the disputed domain name is designed to take advantage of a mistake likely to be made by Internet users when trying to access the Complainant’s website at “www.petro-canada.com” by omitting the hyphen between “petro” and “Canada”.
The Complainant concludes its representations on confusing similarity in listing seven UDRP decisions rendered in the 2000-2006 period where the panels have held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark. See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 and Deutsche Telekom AG v. Dexcom Holdings B.V., WIPO Case No. DTV2006-0001.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name on the following representations or facts that the Complainant has not licensed or otherwise permitted the Respondent to use its PETRO-CANADA Trademark or to register the disputed domain name and represents that the present use of a domain name which is identical to the Complainant’s PETRO-CANADA Trademark is not a bona fide offer of goods or services when the Respondent has no registered or common law rights in the “petro” and “Canada” terms.
While the Respondent has owned the disputed domain name for almost 20 years, since that time there has been no evidence of the Respondent’s use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant claims that the Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of said disputed domain name since the intent for registering the disputed domain name was for commercial gain to mislead and divert customers. The early use of the PETRO-CANADA Trademark registered in Canada as early as 1989, and of the Complainant’s “www.petro-canada.com” website since June 1996, as well as the large retail presence in Canada prior to the registration by the Respondent of the disputed domain name in 1999 and the maintenance by the Respondent of its commercial presence under the Complainant’s PETRO-CANADA Trademark constitutes a prima facie evidence of the absence of the Respondent’s rights or legitimate interests in the disputed domain name.
The Complainant concludes its representations of absence of rights or legitimate interests that the use of the disputed domain name does not constitute a bona fide offer of goods or services when the Respondent has no registered or common law rights in these marks. See Motorola, Inc. v NewGate Internet, Inc., WIPO Case No. D2000-0079.
The Complainant concludes that under the present circumstances already outlined herein, it needs only make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. See Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.
The Complainant claims that the disputed domain name was registered and used in bad faith in that the disputed domain name incorporates the Complainant’s PETRO-CANADA Trademark, well known in Canada, when the disputed domain name was registered and is quite similar to the Complainant’s domain name <petro-canada.com>. While the disputed domain name has been registered since 1999, its website is limited to a parking page and automatically redirects Internet visitors to <ap.petrocanada.com>. Internet visitors to the disputed domain name will see on the parked page a link to “www.sedoparking.com” where Sedo.com LLC is a domain name seller and reseller that offers various related services. Said service allows the domain name holder, the Respondent in the present case, to earn money “when visitors click on ad links”. The Complainant represents that such placing of links on a site using a third party’s trademark in a domain name to generate Internet traffic in an attempt to attract more visitors, by exploiting the goodwill of the trademark has been recognized as bad faith registration and use under paragraph 4(b)(iv) of the Policy. See Bayer HealthCare LLC v. Shen Kaixin, WIPO Case No. D2008-1350.
Despite two attempts in 2013 and 2018 in contacting the Respondent, the Complainant has not received a single response from the Respondent. The Complainant further observes that there were administrative and technical emails different from the registrant email address in the WhoIs information for the disputed domain name and further notes that the contact information for the Respondent did not appear to be a residential address, in that a Google search revealed that it was the address for “Naborhood Home Hardware” in Hamilton and thus represented that the Respondent deliberately provided incorrect contact information while the Respondent was required to provide the Registrar with accurate and reliable contact details and correct or update them when necessary. The Complainant represents that such provision of false contact information suggests bad faith of the Respondent and further adds that in considering how the Complainant’s PETRO-CANADA Trademarks were so well known in Canada, the province Ontario and city of Hamilton, it is inconceivable that the Respondent was not aware of the Complainant’s well-known PETRO-CANADA Trademark when he registered the disputed domain name, considering that there are eight PETRO-CANADA gas stations and two truck stops in Hamilton, and 542 of same in Ontario since early 1990, including one such station on same street as the apparent address of the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has clearly established that it owns many PETRO-CANADA Trademarks in particular the PETRO-CANADA word mark used since 1977 and the logo PETRO-CANADA Trademark used and registered since March 1989. The single very minor distinction with the disputed domain name is the absence of the hyphen between the terms “petro” and “Canada”. The presence or absence of the hyphen between the terms “petro” and “Canada” is very minor in the view of the Panel who therefore concludes that the disputed domain name is confusingly similar to the Complainant’s registered PETRO-CANADA Trademark.
The first criterion has been met.
B. Rights or Legitimate Interests
The Complainant has discharged its prima facie burdenunder paragraph 4(a)(ii) of the Policy, in stating the vast number and location of fuel stations operating under its PETRO CANADA Trademark in Canada where the Respondent resides on the same street as a fuel station operated under the Complainant’s PETRO-CANADA Trademark. Neither is there license or authorization from the Complainant to the Respondent authorizing the latter to register and use the disputed domain name. Thus, the burden of production shifts to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name.
The Complainant having affirmed that it has not given any license nor permission to the Respondent to use its PETRO-CANADA Trademark nor to register the disputed domain name and furthermore, that pursuant to verifications has not found any indicia that the Respondent was identified or associated with the “Petro Canada” terms, the Panel, considering these facts along with the Respondent’s ownership of the disputed domain name for almost 19 years and the lack of any evidence of the Respondent’s use of or demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services, finds that the Complainant has met its prima facie burden of evidence.
The Panel determines that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion has been met.
C. Registered and Used in Bad Faith
The Complainant has clearly shown in its elaborate representations that the Respondent with considerable opportunity of knowledge of the rights of the Complainant in the PETRO-CANADA Trademarks, has without authorization from the Complainant registered the disputed domain name, thus in bad faith. There has not been shown any effort during a period of at least 17 years to present content on the website in association with the disputed domain name that did not and target the Complainant. The redirection of Internet visitors to the disputed domain name and their redirection to the “www.sedoparking.com” website and the offer for sale of services in competition with those of the Complainant is a clear exploitation of the goodwill associated with the PETRO-CANADA Trademark and it has been recognized in previous UDRP decisions that such behavior is one of bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy which the Panel accepts. See Bayer HealthCare LLC v. Shen Kaixin, supra.
The Panel also finds that the Respondent has engaged in further bad faith registration and use of the disputed domain name with the evidence of the presence of what appears to be an inaccurate email address in its WhoIs registration data record and twice ignoring or refusing to answer an invitation by an owner of the well-known PETRO-CANADA Trademarks to transfer the disputed domain name to the said owner. Finally, this a clear and dominant demonstration that the Respondent whose listed address is on the same street in Hamilton as the presence of a PETRO-CANADA gas station was well aware of the existence and use of the PETRO-CANADA Trademarks of the Complainant. The Panel finds and concludes on these clear facts and circumstances evidence of registration and use in bad faith of the disputed domain name by the Respondent.
The third criterion has been met.
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 <petrocanada.com> be transferred to the Complainant.
J. Nelson Landry
Date: July 25, 2018