WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SAIPEM S.P.A., SAIPEM S.A. v. Registration Private, Domains By Proxy, LLC / Miloud Khouchi

Case No. D2019-2525

1. The Parties

The Complainant is SAIPEM S.P.A., SAIPEM S.A., Italy, represented by Studio Torta S.p.A., Italy.

The Respondent is Registration Private, Domains By Proxy, LLC, Unites States of America / Miloud Khouchi, France.

2. The Domain Name and Registrar

The disputed domain name <saipem-s-a.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2019. On October 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 October 25, 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 October 30, 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 November 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2019.

The Center appointed Alistair Payne as the sole panelist in this matter on December 6, 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 SAIPEM S.P.A. (“Complainant 1”) is a publicly listed international energy company that has been in business for over 50 years and that operates worldwide with approximately 32,000 employees. It provides drilling, engineering, procurement, construction and installation services for onshore and offshore pipelines and large installations in the oil and gas and energy sector. It owns various trade mark registrations for the SAIPEM name including International Registration 366262 for the SAIPEM word mark registered on March 5, 1970 and designated in numerous jurisdictions, including in France. And also International Registration 1245041 for the SAIPEM word mark registered on October 8, 2014 and designated in various jurisdictions including the European Union. Complainant 1 owns numerous websites that incorporate the SAIPEM mark including <saipem.com>.

The Complainant SAIPEM S.A. (“Complainant 2”) is a French company that is a wholly owned subsidiary of Complainant 1 and has operations in France and abroad operating as the project execution center that supplies engineering and construction services in the filed of oil & gas and energy to Complainant 1. It uses the SAIPEM marks under licence from Complainant 1 but owns various domain names itself, including <saipem-sa.com>.

The disputed domain name was registered on January 22, 2019 and has been used by the Respondent to send emails in the name of Complainant 2 with a view to purchasing large quantities of products at a very considerable value for delivery to the Respondent’s nominated address.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in the SAIPEM mark as outlined above. It says that the disputed domain name wholly incorporates its SAIPEM mark and this mark is the disputed domain name’s dominant feature. It says that the additional letters and hyphens “-s-a” merely refer to the French company style “societe anonyme” and is merely descriptive and therefore does not remove the confusing similarity between the disputed domain name and the SAIPEM trade mark. The Complainant also notes that the disputed domain name is highly similar to the domain name registered by Complainant 2, namely <saipem-sa.com>.

The Complainant says that it has not authorised or licensed the Respondent to use the trade mark SAIPEM, or to register domain names incorporating the Complainant’s trade mark. The Complainant says that it is not aware of registrations by third parties of the SAIPEM mark and therefore assumes that the Respondent does not have any trade mark rights in the word SAIPEM. The Complainant notes that the disputed domain name is inactive and that therefore the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Complainant also says that the Respondent is using the disputed domain name as an email address for fraudulent activity as described further below.

The Complainant submits that it is very unlikely that the Respondent decided to register the disputed domain name by chance and independently, since it exactly corresponds to the company name of Complainant 2. The Complainant submits that the Respondent registered the disputed domain name specifically with the aim of causing confusion with the well-known Complainant group and used a privacy service to mask its identity. This, says the Complainant, is background to the fact that the Respondent has used the disputed domain name to send emails in the name of Complainant 2 as if from Saipem’s CEO or managers in order to purchase large quantities of products such as champagne, computers and batteries with a value of hundreds of thousands of euros. It notes that the email address [emailaddress@saipem-s-a.com] used by the Respondent is very deceptive because it is so similar to the domain name of Complainant 2, being <saipem-sa.com>. It notes that the signatures in the Respondent’s emails were of existing Saipem managers and that in at least one of the false “purchase orders” that it has seen, the Complainant’s figurative trade mark of Saipem is reproduced at the top of the document and the contact details do not correspond exactly to hose of Complainant 2 and the delivery address is not the Complainant’s address but rather that of a self-storage warehouse. The Complainant further notes that in another case the intended target of the fraud was first contacted by telephone and then informed that the email address for correspondence was [emailaddress@saipem-s-a.com]. Thus, says the Complainant, the Respondent is taking advantage of the Complainant’s trade mark by using email addresses attached to the disputed domain name to fraudulently obtain products which submits the Complainant, is not just evidence of bad faith but also of criminal activity.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant 1 has demonstrated that it owns registered trade mark rights in the SAIPEM mark, in particular, International Registration 366262 for the SAIPEM word mark registered on March 5, 1970 and designated in numerous jurisdictions, including in France and also International Registration 1245041 for the SAIPEM word mark registered on October 8, 2014 and designated in various jurisdictions, including the European Union. Complainant 2 is a wholly owned subsidiary of Complainant 1 and is permitted to use the SAIPEM mark under licence.

The disputed domain name wholly contains the Complainant’s SAIPEM mark and is therefore confusingly similar to it. The Panel agrees with the Complainants’ analysis that the additional letters and hyphens “-s-a” in the disputed domain name merely refer to the French company style “societe anonyme” and are merely descriptive and therefore do not detract from a finding of confusing similarity.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark rights for SAIPEM and the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that it has not authorised or licensed the Respondent to use the trade mark SAIPEM, or to register domain names incorporating the Complainant’s trade mark. The Complainant says that it is not aware of registrations by third parties of the SAIPEM mark and therefore assumes that the Respondent does not have any trade mark rights in the word SAIPEM. The Complainant notes that the disputed domain name is inactive and that therefore the Respondent is not making a legitimate

non-commercial or fair use of the disputed domain name. The Complainant has submitted that the Respondent is using the disputed domain name as an email address for fraudulent activity as described under section C below.

The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name which has not been rebutted by the Respondent. For this reason and as set out under section C below, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint therefore also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

It is clear that by 2019 the Complainants’ worldwide business under the SAIPEM name and mark was very established and that considerable renown attached to the SAIPEM mark which is also highly distinctive. In the circumstances as described below the Panel believes that the Respondent was well aware of the Complainants’ mark and business when it registered the disputed domain name.

The evidence provided by the Complainants points to the Respondent having used the disputed domain name for the purposes of an email scam in which the Respondent masquerading as a senior manager or CEO of the Complainants ordered goods to a very high value for delivery not to the Complainants but rather to a third party owned self-storage warehouse. There is evidence that the Respondent used the SAIPEM trade mark and logo in its correspondence and a highly confusingly similar email address to Complainant 2’s email address, based on the disputed domain name. All of this appears to have been calculated to fool the providers of the goods ordered by the Respondent into thinking that they were dealing with the Complainant when this was not the case. In addition, the Panel notes that the Respondent used a privacy service with a view to masking its true identity. In the Panel’s view this amounts at the least to a bad faith use of the disputed domain name for the Respondent’s own purposes, if not a fraudulent use of it.

It appears therefore that the Respondent registered and used the disputed domain name in full knowledge of the Complainants’ rights and for its own pecuniary gain. This amounts to a clear case of registration and use of the disputed domain name in bad faith under the Policy. Accordingly, the Panel also finds that the Complaint succeeds under this element of the Policy.

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 <saipem-s-a.com> be transferred to the Complainant SAIPEM S.P.A.

Alistair Payne
Sole Panelist
Date: December 14, 2019