WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Halliburton Energy Services, Inc. v. James Howard, Hhalliburton Technologies

Case No. D2020-1233

1. The Parties

The Complainant is Halliburton Energy Services, Inc., United States of America (“United States”), represented by Polsinelli PC, United States.

The Respondent is James Howard, Hhalliburton Technologies, United States.

2. The Domain Name and Registrar

The disputed domain name <halliburtontech.com> (“Disputed Domain Name”) is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2020. On May 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 18, 2020, 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 May 26, 2020, 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 May 27, 2020.

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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on June 29, 2020. 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, Halliburton Energy Services, Inc., owns the HALLIBURTON trademark (e.g., United States trademark registration no. 2575819, registered on June 4, 2002), which it uses in connection with providing products and services to the energy industry in over 70 countries. The Disputed Domain Name was registered on March 15, 2020. The Complainant provided evidence that the Disputed Domain Name does not resolve to an active website and has been used in furtherance of a fraudulent email scheme.

5. Parties’ Contentions

A. Complainant

Founded in 1919, the Complainant does business in more than 70 countries worldwide, and is one of the largest providers of products and services to the energy industry. The Complainant’s annual revenues in 2017 and 2018 were USD 20.6 billion and USD 23.9 billion, respectively.

The Complainant has continually used the HALLIBURTON mark in commerce for more than 80 years and owns various United States trademark registrations for the HALLIBURTON mark, including United States trademark registration nos. 2,575,819 and 2,575,840, both registered on June 4, 2002.

The Complainant also owns more than 370 trademark registrations in 60 countries worldwide for the HALLIBURTON mark and other HALLIBURTON-formative marks.

The Complainant has registered domain names incorporating its HALLIBURTON mark, including <halliburton.com>, which it uses for its official website.

The Respondent is not affiliated with Halliburton, licensed to use the Complainant’s HALLIBURTON mark, or licensed to register or use domain names or associated email accounts incorporating the HALLIBURTON mark.

The Respondent has used the Disputed Domain Name in an attempt to impersonate a Purchasing Operations Specialist of the Complainant, and contact vendors who work with the Complainant. The Respondent contacted a vendor on March 19, 2020 using an email address associated with the Disputed Domain Name, falsely requesting a quotation for various products on behalf of the Complainant. The fraudulent email was sent four days after the Respondent registered the Disputed Domain Name. The Respondent’s attempt to perpetrate a fraud was detected when the vendor forwarded the email chain to an actual employee of the Complainant, who then reported it to an internal security team.

The Disputed Domain Name is confusingly similar to the Complainant’s distinctive and well-known HALLIBURTON mark within the meaning of paragraph 4(a)(i) of the Policy, having merely added the abbreviation “tech” to the end of the distinctive HALLIBURTON mark. The addition of the abbreviation “tech,” short for technology, does not dispel the confusing similarity of the Disputed Domain Name to the Complainant’s mark, but actually demonstrates that the Respondent was targeting the Complainant’s mark in its scheme to impersonate an employee of the Complainant, as Halliburton is an oil field services company, which develops oil and gas technology.

The Respondent has no rights or legitimate interests in the Disputed Domain Name for purposes of paragraph 4(a)(ii) of the Policy. By registering a domain name confusingly similar to the Complainant’s well-known HALLIBURTON mark and attempting to masquerade as a person who works at the Complainant in order to fraudulently contact vendors and submit orders, it is quite clear that the Respondent acquired the Disputed Domain Name for the sole purpose of exploiting the Complainant’s rights, title, interest, and goodwill in the HALLIBURTON mark.

The evidence reflects the Respondent’s bad faith use of the Disputed Domain Name in an attempt to profit from and exploit the Complainant’s HALLIBURTON mark through email fraud. Fraudulent activity can never be the basis for rights or legitimate interests in a domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.13.1 (and cases cited therein).

The record reveals that the Respondent’s sole motivation in relation to the registration and use of the Disputed Domain Name was to capitalize on, or otherwise take advantage of, the likely confusion with the Complainant’s trademark rights. See WIPO Overview 3.0, section 3.1 (and cases cited therein);

Further, when this use and registration of the Disputed Domain Name is combined with the scheme of fraud sought to be perpetrated not only on the Complainant, but on vendors of the Complainant, the evidence of bad faith could not be more clear.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Furthermore, the Complainant’s use of its HALLIBURTON trademark is demonstrated by its website at “www.halliburton.com” and in other promotional material submitted with its Complaint. The Complainant has provided evidence that it has rights in the HALLIBURTON mark through its United States registrations.

Here, the Complainant’s HALLIBURTON mark is fully incorporated in the Disputed Domain Name, and the addition of the descriptive tern “tech” does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the Disputed Domain Name is confusingly similar to the Complainant’s HALLIBURTON mark

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondent is not affiliated with the Complainant and has not been authorized to use the Complainant’s mark. The burden of production thus shifts to the Respondent to demonstrate its rights or legitimate interests, with the ultimate burden of proof remaining with the Complainant. See WIPO Overview 3.0, section 2.1. The Respondent has submitted no evidence or argument.

Furthermore, the use to which the Respondent has put the Disputed Domain Name, discussed in the section on bad faith below, is plainly not a good faith use.

The Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is clear from the relevant circumstances that the Respondent was well aware of the Complainant and had the Complainant’s well-known HALLIBURTON mark firmly in mind when registering the Disputed Domain Name. There is unrebutted evidence that the Respondent utilized the Disputed Domain Name to send emails to the Complainant’s vendors, which emails were purportedly signed by an employee of the Complainant, utilizing the name of an employee of the Complainant and an actual signature block of the Complainant, which incorporates the HALLIBURTON logo.

There is therefore no doubt that the Respondent was aware of the Complainant’s prior rights in its trademark, and that the Respondent sought to exploit those rights and thus, acted in bad faith. See Minerva S.A. v. Whoisguard Prote, Whoisguard, Inc. / Greyhat Services, WIPO Case No. D2016-0385 (finding that the disputed domain name was registered and used in bad faith by sending fraudulent emails in an attempt to create a likelihood of confusion between it and the Complainant).

Furthermore, the Panel may also make negative inferences arising from the Respondent’s failure to respond. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.

The Panel finds that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith, as outlined in paragraph 4(a)(iii) 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 <halliburtontech.com> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: July 13, 2020