WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Suncor Energy Inc. v. Mossab Basir, Leo Group, Incorporated

Case No. D2019-0882

1. The Parties

The Complainant is Suncor Energy Inc., Canada, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).

The Respondent is Mossab Basir, Leo Group, Incorporated, Canada, self-represented.

2. The Domain Names and Registrar

The disputed domain names <petrocanada.app>, <petropass.app>, and <petropoints.app> (jointly “the Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2019. On April 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 19, 2019, 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 and contact information for the Disputed Domain Names.

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 April 26, 2019. On April 27, 2019, the Respondent sent an email communication to the Center, stating “I am prepared to settle this dispute and limit the cost of proceedings in the amount of $1,000 USD for the domains. This will cover the costs I have incurred to date”. On April 29, 2019, the Center sent the possible settlement email to the Parties, to which the Complainant replied that it did not intend to pursue a settlement.

In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2019. The Response was filed with the Center on May 9, 2019.

The Center appointed Jacques de Werra as the sole panelist in this matter on May 14, 2019. 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 leading integrated energy companies and the fifth largest North American energy company. Its operations include oil sands development and upgrading, offshore oil and gas production, petroleum refining, and product marketing under the “Petro-Canada” brand. In 2018, the Complainant had gross revenues of USD 39.5 billion and operating earnings of USD 4.3 billion in 2018 and employed 12,480 people at year end.

The Complainant is the owner of at least 210 trademark registrations in 57 countries plus the European Union for trademarks that consist of or contain the mark PETRO, including PETRO CANADA, PETRO-PASS, and PETRO-POINTS (together the “Trademark”), including:

- Canadian Reg. No. TMA 267,188 for PETRO CANADA (registered on March 12, 1982);
- Canadian Reg. No. TMA 326,695 for PETRO-PASS (registered on April 24, 1987); and,
- Canadian Reg. No. TMA 432,489 for PETRO-POINTS (registered on August 26, 1994).

The Complainant is the registrant of and uses multiple domain names that consist of or include the Trademark, including the domain names <petro-canada.com> (registered on June 28, 1996), <petropass.com> (registered on July 13, 2002), and <petropoints.com> (registered on December 4, 1997), each of which the Complainant uses in connection with a website for services associated with the Trademark.

The Disputed Domain Names were registered on the following dates:

<petrocanada.app> on May 13, 2018;
<petropass.app> on May 21, 2018; and,
<petropoints.app> on May 13, 2018.

The Respondent is not using any of the Disputed Domain Names in connection with an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the Disputed Domain Names is confusingly similar to the Trademark, especially those that consist of or include PETRO CANADA, PETRO-PASS, and PETRO-POINTS.

The Complainant further claims that the Respondent has no rights or legitimate interests in any of the Disputed Domain Names because the Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to register or use the Trademark in any manner. By failing to use the Disputed Domain Names in connection with active websites, the Respondent clearly has not used the Disputed Domain Names “in connection with a bona fide offering of goods or services” and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. As numerous panels have repeatedly said, “[p]assively holding a domain name does not constitute a bona fide offering of goods or services”.

To the Complainant’s knowledge, the Respondent has never been commonly known by any of the Disputed Domain Names and has never acquired any trademark or service mark rights in any of the Disputed Domain Names. Therefore, the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.

The Complainant claims that each of the Disputed Domain Names should be considered as having been registered and used in bad faith by the Respondent because the Respondent’s motive in registering and using the Disputed Domain Names is to disrupt the Complainant’s relationship with its customers or potential customers or to attempt to attract Internet users for potential gain. The Respondent also has acted in bad faith pursuant to paragraph 4(b)(ii) of the Policy, because the Respondent’s registration of the Disputed Domain Names obviously prevents the Complainant from reflecting its mark in corresponding domain names and because the Respondent has “engaged in a pattern of such conduct” as shown by the registration of the three Disputed Domain Names.

B. Respondent

In his response of May 9, 2019, the Respondent contends that he purchased the Disputed Domain Names in May 2018 for the purpose of creating an application for a new Pet Robot called “Petro” which is Ukrainian way of spelling Peter. He indicates that there is a gamification aspect to owning the robot and that is why he requires the Disputed Domain Names incorporates the terms “Petro’s Points” and “Petro’s Pass”.

He further indicates that his company Leo Group invests in and builds rapid prototypes for new technology ideas and that he has invested in this idea and name and does not intend to infringe on any trademarks and is certainly not attempting to leverage the brand equity or name related to the Complainant which is in a completely irrelevant sector to his venture. He further states that he is not in the position financially to simply walk away as he has borrowed funds and used credit cards to create his product and app designs and that in order for him to re-create, it will cost him money. This being said, in order to accommodate and resolve the dispute, he offered a USD 1,000 per disputed domain name cost to the Complainant which would cover his costs building this brand and allow him to choose a different name for his venture.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s 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 domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark.

A comparison between the Disputed Domain Names and the Trademark shows that the Disputed Domain Names can be considered as confusingly similar to the Trademark, because the Disputed Domain Names correspond to variations of the Trademark which have been registered as individual trademarks (i.e. PETRO CANADA, PETRO-PASS, and PETRO-POINTS).

As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Names, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names that replicate the variations of the Trademark owned by the Complainant as their distinctive element without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark.

The Complainant has thus established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Names, that the Respondent has not been commonly known by the Disputed Domain Names, and that the Respondent does not actively use the Disputed Domain Names (which thus cannot constitute a use in connection with a bona fide attempt to offer goods and services).

In its Response, the Respondent claims in essence that he would have invested in the idea of creating an application for a new Pet Robot called “Petro” which is Ukrainian way of spelling Peter.and that he has borrowed funds and used credit cards to create his product and app designs. The Panel notes in this respect that the Respondent does not claim that he does not know about the Complainant’s Trademark and about the Complainant’s activities. The question before the Panel is thus whether these allegations made by the Respondent are sufficient in order to establish rights or legitimate interests rights of the Respondent in the Disputed Domain Names, and most specifically whether the Respondent has made “demonstrable preparations to use” the Disputed Domain Names in connection with a bona fide offering of goods or services.

As confirmed by WIPO Overview 3.0, section 2.2, “demonstrable preparations to use” presuppose the ability of the Respondent to demonstrate a preparation to use the Disputed Domain Names, which implies to provide evidence supporting the intended use of the Disputed Domain Names, whereby the level of the required evidence can vary in substance and sophistication depending on the time lapsed since the registration of the Disputed Domain Names. In this case, the Respondent has merely alleged without filing any evidence in order to support his contemplated plan to use the Disputed Domain Names in connection with its Pet Robot “Petro” project, knowing that the Disputed Domain Names were registered already in May 2018. On this basis, given the absence of evidence brought by the Respondent and given the low plausibility of the information provided by the Respondent supporting his position, the Panel considers that the Respondent has not shown demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services in the future.

In addition, the Panel notes the nature of the Disputed Domain Names which carries a high risk of implied affiliation because the Disputed Domain Names replicate the Trademark in its variations. WIPO Overview 3.0, section 2.5.1.

On this basis, the Panel accepts that the Complainant has shownthat the Respondent does not have rights or legitimate interests in the Disputed Domain Names, particularly given that the Respondent’s has not been in a position to demonstrate convincingly his preparation to use the Disputed Domain Names in connection with a bona fide attempt to offer goods and services.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademark (and the variations thereof which correspond to the Disputed Domain Names) distinctively identify the Complainant’s Trademark so that the choice of the Disputed Domain Names cannot be reasonably explained otherwise than as a reference to the Trademark. The explanations given by the Respondent on this point (including the alleged choice of the term “Petro” as meaning Peter in Ukrainian which lacks any logical geographic connection with at least one of the Disputed Domain Names which refers to Canada, i.e. <petrocanada.app>) are not convincing. The Panel notes in this respect that the Trademark’s brand recognition has not been questioned by the Respondent who has not claimed that it did not know about the Trademark in his response, which may not be surprising knowing that the Respondent is based in Canada where the Complainant operates. Moreover, it is most unlikely that the cumulative registration by the Respondent of the Disputed Domain Names which correspond to variations of the Trademark owned by the Complainant does not result from a deliberate intent of the Respondent to refer to the Trademark.

Based on the established practice under the UDRP, the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Factors that have been considered relevant in applying the passive holding doctrine include: (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.

In this case, by application of these factors, the Panel holds that the passive holding of the Disputed Domain Names by the Respondent does not prevent a finding of bad faith. The degree of distinctiveness and of reputation of the Trademark is established and the Respondent has failed to provide any evidence of actual or contemplated good-faith use of the Disputed Domain Names.

The Panel further notes that the Respondent offered to sell the Disputed Domain Names for USD 1,000 per disputed domain name to the Complainant in order to cover his (undemonstrated) costs building this brand and allow him to choose a different name for his venture. The Complainant further claims that the Respondent engaged in a pattern of conduct in that the Respondent registered the three Disputed Domain Names in order to prevent the Complainant from reflecting its mark in corresponding domain names. The Panel notes that these elements may constitute additional factors establishing bad faith registration and use of the Disputed Domain Names under paragraph 4(b) of the Policy. The Panel however does not have to decide on these issues, given that it has already concluded that the conditions of a bad faith registration and use of the Disputed Domain Names were met on the basis of the elements exposed above.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

7. Decision

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 <petrocanada.app>, <petropass.app>, and <petropoints.app> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: May 31, 2019