WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weir Engineering Services Limited v. Whois Agent, Domain Protection Services, Inc. / Contact ID: 16196829 Fahn Meshack
Case No. D2019-2006
1. The Parties
The Complainant is Weir Engineering Services Limited, United Kingdom, represented by Rory MacLeod, United Kingdom.
The Respondent is Whois Agent, Domain Protection Services, Inc. / Contact ID: 16196829 Fahn Meshack, India.
2. The Domain Name and Registrar
The disputed domain name <weirogs.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2019. On August 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant sent an email on September 2, 2019 stating that the Complainant is not willing to amend the Complaint with the registrant information received from the Registrar.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 21, 2019.
The Center verified that the Complaint together with the amendment to 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 September 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on October 23, 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 a well-known engineering company, founded in Scotland in 1871, and doing business today in many countries. It has used the mark WEIR in connection with its services since the time it was founded. The Complainant owns many trademark registrations for the WEIR mark around the world, including registrations in the United States of America and the United Arab Emirates, all of which predate the registration of the disputed domain name. The Complainant provides, among other things, services relating to oil and gas.
The Respondent registered the disputed domain name on May 9, 2019. It set up a website at the disputed domain name marketing and promoting the services of a business located in the United Arab Emirates purporting to provide services in the oil and gas industries.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant has rights in the WEIR mark based on its longstanding use since the nineteenth century and its trademark registrations in numerous countries around the world. The disputed domain name is confusingly similar to the WEIR mark – it incorporates the mark in its entirety, accompanied by the letters “ogs” which, as the Complainant asserts, may refer to the terms “oil” and “gas”. This additional subject matter does not reduce the confusing similarity. Accordingly, the Complainant has prevailed on this first element of the Policy.
B. Rights or Legitimate Interests
The Complainant will succeed under this second element of the Policy if it establishes, prima facie, that the Respondent lacks rights or legitimate interests under the Policy. The Complainant has made that showing and the Respondent has not overcome it. The following facts establish the Complainant’s prima facie case:
- The Respondent does not have trademark rights in the mark WEIR for the goods and services for which the Complainant enjoys trademark registrations.
- The Complainant has not authorized the Respondent to use the WEIR mark in the disputed domain name.
- The Respondent has used the disputed domain name to establish a website using a name that improperly trades off of the goodwill of the WEIR mark in the United Arab Emirates.
- If the Respondent really had the rights in the WEIR mark that it claims to have on the website at the disputed domain name, it would have challenged the Complainant’s investments and business ventures in the United Arab Emirates.
The Complainant has prevailed on this second element of the Policy.
C. Registered and Used in Bad Faith
Because the Complainant’s WEIR mark is well-known due to its longstanding use and the Complainant’s trademark registrations, it is implausible that the Respondent was not aware of that mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name.
Bad faith use is shown from the Respondent’s activities of using the disputed domain name to publish a website for services very similar to those offered by the Complainant under the WEIR mark and in a market (the United Arab Emirates) where the Complainant has used the mark and enjoys the benefit of trademark registration.
Further, the Respondent has apparently engaged in a pattern of registering domain names that contain well known trademarks owned by other parties. For these reasons, the Panel finds that the Complainant has successfully met this third element under 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 disputed domain name <weirogs.com> be transferred to the Complainant.
Evan D. Brown
Date: November 6, 2019