WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saudi Arabian Oil Co. v. Lim Sang Woon
Case No. D2019-2212
1. The Parties
The Complainant is Saudi Arabian Oil Co., Saudi Arabia, represented by Fish & Richardson P.C., United States of America (“United States”).
The Respondent is Lim Sang Woon, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names <aramcoholdings.com>, <aramcosabic.com>, and <saudiaramcoholdings.com> are registered with Gabia, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2019. On September 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 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.
On September 16, 2019, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On September 19, 2019, the Complainant submitted an amended Complaint requesting for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Korean of the Complaint, and the proceedings commenced on September 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2019.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on November 1, 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, Saudi Arabian Oil Co. (collectively, with its subsidiaries and related entities, “Aramco”), is an oil company founded in 1933, and is based in Dhahran, Saudi Arabia. It is one of the largest oil companies in the world, and it maintains operations in the United States and internationally, with subsidiaries and affiliates in the Republic of Korea, the United States, China, Egypt, India, Japan, the Netherlands, Singapore, the United Arab Emirates, and the United Kingdom.
As part of its efforts to protect its intellectual property, the Complainant owns ARAMCO and SAUDI ARAMCO trademarks worldwide and it owns several registrations and applications under the aforesaid trademarks (i.e., the Republic of Korea, the United States, European Union, Saudi Arabia, and United Arab Emirates). For example, Republic of Korea registration No. 40-1001447 ARAMCO, registered on October 16, 2013. The Complainant has used the ARAMCO and SAUDI ARAMCO trademarks since at least as early as 1944 and 1988, respectively, and since then, it has continuously used these trademarks.
The Complainant’s official websites are “www.aramco.com” and “www.saudiaramco.com”,which are used to advertise and promote the goods and services offered under its ARAMCO and SAUDI ARAMCO trademarks. The Complainant registered its domain names <aramco.com> and <saudiaramco.com>on January 27, 1994, and August 6, 1997, respectively.
Saudi Basic Industries Corporation (“SABIC”) is a diversified chemical manufacturing company based in Riyadh, Saudi Arabia, and the Complainant signed a preliminary deal with SABIC to develop the oil-to-chemicals complexes. SABIC registered its official website at the domain name <sabic.com> on October 1, 1998, and has used the website to advertise and promote the goods and services offered under its SABIC trademark.
The disputed domain names <aramcosabic.com>, <aramcoholdings.com>, and <saudiaramcoholdings.com> were registered by the Respondent on December 11, 2017, January 12, 2016, and April 26, 2016, respectively, but all resolve to inactive websites.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because i) the Complainant and SABIC have not licensed or otherwise permitted the Respondent to use any of their trademarks; ii) there is no evidence of 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; iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the disputed domain names or the name “Aramco,” “Saudi Aramco,” or “SABIC.”
The Complainant also contends that the Respondent registered and is using the disputed domain names in bad faith because the Respondent intentionally (i) attempted to sell, rent, or otherwise transfer the disputed domain names for valuable consideration in excess of the out-of-pocket costs directly related to the disputed domain names; (ii) registered numerous domain names comprised of the famous trademarks of third parties including the present case, and such action shows a pattern of conduct by the Respondent of preventing the owners of the trademarks from reflecting the marks in the corresponding domain names; and (iii) registered and is using the disputed domain names to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source or affiliation of the Respondent’s website. Lastly, the Complainant contends that the Respondent’s failure to make active use of the disputed domain names also suggests bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent neither replied to the Complainant nor responded to the Center’s communication of notification of the Complaint before the due date for Response on October 16, 2019, and no email communications were received from the Respondent during the proceeding. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.
However, paragraph 14 of the Rules provides in the event of default that a panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Tradewind Media, LLC d/b/a Intopic Media v Jayson Hahn, WIPO Case No. D2010-1413, “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.”; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.
A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement, unless otherwise agreed to by the Parties, subject to the authority of the Panel to determine otherwise.
In this case, the language of the Registration Agreement is Korean. However, in determining the language of the proceeding in the present case, pursuant to section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel considers the following points:
(i) during the pre-Complaint communications, the Respondent sent email communications to the Complainant in English, which indicates the Respondent’s familiarity with English; (ii) the Respondent did not respond to any of the communications made by the Center in both English and Korean, showing his unwillingness to participate in this proceeding, in particular, the Respondent did not comment on the language of the proceeding; and (iii) ordering the Complainant to translate the Complaint in Korean will cause undue delay and expense in the process.
In light of the aforementioned circumstances, the Panel finds that there will be no prejudice against the Respondent as a result of the Complainant’s submission in English. Thus, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.
B. Identical or Confusingly Similar
The disputed domain names <aramcoholdings.com>, <aramcosabic.com> incorporate the Complainant’s ARAMCO trademark in its entirety and the disputed domain name <saudiaramcoholdings.com> incorporates the Complainant’s SAUDI ARAMCO trademark in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview 3.0; see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” UDRP panels have also held that the addition of a third-party trademark to the complainant’s trademark does not eliminate the confusing similarity between a domain name and a protected trademark. See L’Air Liquide v. MIC, WIPO Case No. D2001-1246. Moreover, the generic Top-Level Domain (“gTLD”), such as “.com,” is normally disregarded during the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.
In this case, in the disputed domain names, SABIC trademark, the descriptive term “holdings,” or gTLD “.com,” are attached to the Complainant’s ARAMCO and SAUDI ARAMCO trademarks. However, merely adding a third-party trademark or a descriptive term does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain names. See Sonera Ojy and Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403; see also, JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486, “The mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names”. Moreover, the mere addition of the gTLD “.com” also does not eliminate confusing similarity because gTLD is viewed as a standard registration requirement as the “use of gTLD is required of domain name registrants.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.
Therefore, the Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.
C. Rights or Legitimate Interests
Section 2.1 of the WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademarks to the Respondent. The Complainant has not authorized or permitted the Respondent to use its ARAMCO or SAUDI ARAMCO trademarks. The Panel thus finds that the Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain names, which wholly incorporate the Complainant’s marks. F.Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.
Furthermore, the Panel agrees that there is no evidence of 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 within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence, which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, or is commonly known by the disputed domain names or the name “Aramco” or “Saudi Aramco.”
Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names.
By failing to respond to the Complainant’s position before the deadline, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.
In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Paragraph 4(b)(i) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent has registered or acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. In this case, according to the correspondence between the Complainant and the Respondent submitted by the Complainant as Annex 16, the Respondent offered the disputed domain name <aramcosabic.com> for USD 20,000, which is clearly in excess of out-of-pocket costs that may have been incurred for the registration as the Complainant originally offered USD 200 to transfer the disputed domain name to it.
Furthermore, the Respondent has registered over 260 domain names comprised of the famous trademarks of third parties, and such action, in combination with the present case, shows a pattern of conduct by the Respondent of preventing the owner of the trademark from reflecting the mark in a corresponding domain name, which constitutes bad faith under paragraph 4(b)(ii) of the Policy.
Although the disputed domain names do not resolve to any active website, the UDRP panels also have previously held that the use of a confusingly similar domain name for an inactive website indicates bad faith. See HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Private Registration / George Kara, WIPO Case No. D2015-0666. In this case, ARAMCO and SAUDI ARAMCO are famous trademarks worldwide, and the Complainant’s preliminary deal with SABIC has received significant press. Therefore, it is highly likely that the Respondent was aware of the Complainant, its products and its trademarks, and intentionally registered the disputed domain names to confuse Internet users and potentially attract them to the Respondent’s websites for commercial gains. Moreover, the Respondent’s failure to make active use of the disputed domain names in this case does not prevent a finding of bad faith.
Based on the combination of the points mentioned above, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.
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 <aramcoholdings.com>, <aramcosabic.com>, and <saudiaramcoholdings.com> be transferred to the Complainant.
Thomas P. Pinansky
Date: November 15, 2019