WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Subsea 7 Limited v. c/o WHOIStrustee.com Limited, Registrant of subsea7uae.com / Vendor Donald

Case No. D2019-1294

1. The Parties

The Complainant is Subsea 7 Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

The Respondent is c/o WHOIStrustee.com Limited, Registrant of subsea7uae.com, United Kingdom / Vendor Donald, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <subsea7uae.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 7, 2019, the Registrar transmitted by email 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 email communication to the Complainant on June 18, 2019, 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 June 20, 2019.

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 June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 16, 2019.

The Center appointed James Bridgeman as the sole panelist in this matter on July 25, 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 carries on an international business providing engineering services and is the proprietor of a substantial portfolio of registrations containing the term SUBSEA 7 or subsea 7 including:

- United Kingdom Trade Mark Registration No. UK00002304950 for SUBSEA 7 (Series of 6), registered on April 21, 2006;
- European Union (“EU”) Trade Mark Registration No. 011426335 for SUBSEA 7, registered on May 13, 2013;
- International Registration No. 1147789 for SUBSEA 7, registered on December 14, 2012, registered on December 14, 2012, designating registered protection in Australia, Norway, New Zealand, Singapore, Switzerland, the Russian Federation, and the United States;
- EU Trade Mark Registration No. 011426426 for SUBSEA 7 logo, registered on May 13, 2013;
- International Registration No. 1147588 for SUBSEA 7, registered on December 14, 2012, designating registered protection in Australia, Norway, the Russian Federation, Singapore, Switzerland and the United States.

Each of the above trademarks are registered for specified goods in class 7 and specified services in classes 37, 39, and 42.

The Complainant’s registered trademark portfolio also includes eleven United Arab Emirates (“UAE”) Trade Mark Registrations numbers 261289, 261290, 261291, 261292, 261293, 261294, 261295, 261296, 261297, 261298, and 261299 for goods and services in classes 6, 7, 9, 11, 12, 19, 20, 37, 39, 40, and 42 respectively, registered on February 06, 2018, or May 08, 2017.

The Complainant maintains a website at “www.subsea7.com”.

In the absence of any Response or communication from the Respondent, there is no information available about the Respondent except for which has been submitted in the Complaint, the WhoIs database and the Registrar’s response to the Center’s request for details of the registrant of the disputed domain name.

The disputed domain name was registered on May 27, 2019, and resolved to a website with graphics and other information taken from the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant relies on the above-described registered trademarks and submits that the disputed domain name <subsea7uae.com> is virtually identical to the Complainant’s SUBSEA 7 trademark.

The term “subsea 7” is not descriptive in any way and the combination of words and numerals do not have any generic, dictionary meaning; the term “UAE” merely indicates a geographical location and does not serve to distinguish the disputed domain name from the Complainant’s mark; and it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) extension. The Complainant’s trademark SUBSEA 7 has an independent distinctive role in the disputed domain name so that Internet users viewing the disputed domain name will immediately recognise the word “subsea” and the numeral “7” separately from the term “UAE”.

The Complainant asserts that the Respondent is not connected with the Complainant’s business and submits that the Respondent has no rights or legitimate interests in the disputed domain name arguing that, insofar as the Complainant is aware, the Respondent does not own any registered rights in any trademarks which comprise part or all of the disputed domain name. The Complainant asserts that it has not given its consent for the Respondent to use its registered trademarks in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known as “subsea7uae” and the Complainant submits that even if the Respondent does refer to itself as “subsea7UAE” such use cannot be legitimate or a bona fide use of the disputed domain name under the Policy.

The Complainant submits that there is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name for legitimate purposes, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services as it redirects to an active website that bears a striking resemblance to the Complainant’s website “www.subsea7.com”.

The Complainant has submitted a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Therefore the burden of production lies on the Respondent. In the absence of a Response or assertion that any such rights or legitimate interests exist, this must lead to a presumption that the Respondent is unable to establish that he has such rights or legitimate interests (see Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004).

The Complainant submits that the disputed domain name was registered and has been used in bad faith. The disputed domain name was registered by the Respondent on May 27, 2019 and the Complainant’s registered rights date back to 2006. The Complainant’s mark is well-known in the industry. Not only is it likely that the Respondent was aware of the Complainant’s rights in the mark when the disputed domain name was registered and that the Respondent was aware of the Complainant’s reputation and mark prior to acquiring or registering the disputed domain name but it is inevitable that Internet users would mistakenly believe that the Respondent is the Complainant’s company or a subsidiary entity associated with the Complainant.

The Complainant submits that there can be no meaningful reason for the Respondent to use the disputed domain name in this manner, other than (a) as a blocking registration (namely, to prevent the Complainant from registering and exploiting the disputed domain name legitimately) and (b) to mislead consumers into believing that the disputed domain name is connected with or endorsed by the Complainant, thereby taking unfair advantage of the Complainant’s reputation and rights.

The Complainant further submits that there is a realistic and serious threat posed by the Respondent’s continued ownership of the disputed domain name, not least the threat of a diversion of custom and the inevitable damage to the reputation that the Complainant.

The Complainant alleges that the disputed domain name is being used to advertise and offer jobs to prospective employees, under the guise that the Respondent is the UAE-division of the Complainant’s business. In support of this allegation the Complainant has furnished an email string between a named prospective employee of the Complainant and the Respondent (using the email address “subsea7uae@[...].com”) in which the prospective employee was invited to make payment to a fictitious enterprise using the disputed domain name. The purported reason for the payment was for the proposed employee to secure travel documentation for the purpose of taking up the offered-employment and the Respondent promised that the costs incurred by the prospective employee would be reimbursed upon presentation of expense reports and receipts. The Complainant submits that these communications present irrefutable evidence of fraudulent activity on the disputed domain name, in particular scam activity and business identity fraud.

Finally, the Complainant argues that UDRP panels have historically found that there can be a finding of registration and use in bad faith where there is use of a widely known trademark in a domain name where there is no response and no explanation as to why the use could be good faith (see Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4 of the Policy requires the Complainant to establish that:

(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.

A. Identical or Confusingly Similar

The Complainant has satisfied this Panel that it has rights in the trademark and service mark SUBSEA 7, established by its use of the mark in its international engineering business and the above-mentioned trademark registrations upon which it relies.

Having compared both, this Panel finds that the disputed domain name <subsea7uae.com> is confusingly similar to the Complainant’s trademark. The Complainant’s SUBSEA 7 mark is the distinctive and dominant element of the disputed domain name; the additional letters “UAE” do not serve to distinguish the disputed domain name in the context (as they are a reference to a geographical location in which the Complainant owns registered trademarks); and in the circumstances of this case, the gTLD “.com” extension may be ignored.

The Complainant has therefore satisfied the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant, being the owner of the SUBSEA 7 mark has asserted that there is no commercial relationship between the Complainant and the Respondent; that the Complainant has not been granted any license or permission to use the Complainant’s mark in the disputed domain name; that there is no evidence that the Respondent is known by the disputed domain name or is using the disputed domain name for any bona fide reason. On the contrary the Complainant has made out a prima facie case that the Respondent is using the disputed domain name both as a website address and as part of an email address to impersonate the Complainant for the purposes of misrepresenting to innocent applications for employment that the Respondent is in fact the Complainant.

Where a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name at issue, it is well established that the burden of production shifts to the respondent.

In the present case, the Respondent has not filed any Response or offered any explanation or evidence to rebut the allegations of the Complainant. The Respondent has therefore failed to discharge the burden of production and this Panel finds on the balance of probabilities that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is entitled to succeed in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

This Panel finds also that the disputed domain name was registered and is being used in bad faith as alleged by the Complainant.

On the evidence adduced, it is improbable that the Respondent was unaware of the Complainant and its rights in the SUBSEA 7 mark when the disputed domain name was chosen and registered. It is also improbable that the Respondent was not aware of the Complainant’s pre-existing and similar domain name <subsea7.com> at the time of registration of the disputed domain name.

The choice of the disputed domain name that incorporates of the Complainant’s distinctive trademark as the only dominant element of the disputed domain name is beyond the likelihood of coincidence.

The unrebutted evidence of the Complainant shows that since the disputed domain name was registered the Respondent has caused, permitted or allowed the disputed domain name to resolve to a website which is almost identical to the Complainant’s website; that uses content from the Complainant’s website; and purports to misrepresent itself as being the Complainant’s website.

The Complainant has also provided unrebutted evidence that the Respondent is using the Complainant’s mark in an email address for the purpose of misrepresenting to prospective employees of the Complainant that the Respondent is in fact the Complainant for the purposes of inducing the innocent applicant to make payments to secure travel documents needed to take up employment. This is damaging both to the prospective employee and to the reputation of the Complainant.

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy and having succeeded in this Complaint is entitled to be granted the relief sought.

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 name <subsea7uae.com> be transferred to the Complainant

James Bridgeman
Sole Panelist
Date: August 7, 2019