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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Subsea 7 Limited v. Privacy Protect, LLC (PrivacyProtect.org) / Roybal Cataldo Rascon, Profesorbitcoin S.L

Case No. D2020-2173

1. The Parties

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

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Roybal Cataldo Rascon, Profesorbitcoin S.L, Spain.

2. The Domain Name and Registrar

The disputed domain name <subsea7.center> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2020. On August 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 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 August 25, 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 amendment to the Complaint on August 26, 2020.

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 August 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2020.

The Center appointed Mihaela Maravela as the sole panelist in this matter on October 1, 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 operates an international business providing seabed-to-surface engineering construction, and related services. The Complainant is the owner of registered trademarks consisting of the words “subsea 7” or “subsea seven” in various jurisdictions throughout the world, including the following:

- the International trademark No. 1147789 for SUBSEA 7 (word mark), registered on December 14,

2012;

- the United Kingdom trademark No. UK00002304950 for SUBSEA 7 and SUBSEA SEVEN (word mark), registered on April 21, 2006; and

- the European Union Trade Mark No. 011426335 for SUBSEA 7 (word mark), registered on May 13, 2013.

The disputed domain name was registered on June 16, 2020 and it is being used to redirect to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is identical with its trademarks. The Complainant also contends that it has not consented that the Respondent uses its trademarks in the disputed domain name and that the Respondent is not commonly known by the disputed domain name.

Moreover, the Complainant indicates that the disputed domain name automatically redirects to the Complainant’s website and such use cannot constitute a legitimate interest or a bona fide use of the disputed domain name, not least because the disputed domain name is being used in a manner that misleads Internet users as to the source or affiliation of the website, by creating a likelihood of confusion with the Complainant’s trademark rights.

In addition, the Complainant argues that its trademark is well known in the industry, therefore the Respondent was aware of the Complainant’s rights prior to acquiring or registering the disputed domain name and also visitors of the disputed domain name would mistakenly believe that the Respondent is the Complainant’s company or a subsidiary entity associated with the Complainant. This conclusion is reinforced by the fact that the disputed domain name redirects to the Complainant’s website. The Complainant also argues that the disputed domain name is being used in bad faith 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 in its trademark rights.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the fact that no Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“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” paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the SUBSEA 7 trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.

Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

In this case, the disputed domain name wholly incorporates the Complainant’s registered trademark SUBSEA 7. It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.center”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0 and also e.g., CLARINS v. Jayson Jones, WIPO Case No. D2014-1138.

This Panel concludes that the disputed domain name is identical to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests. The Complainant has established that it is the owner of the trademark SUBSEA 7, and claims that the Complainant has not licenced or otherwise authorised the Respondent to use the said trademark. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “subsea 7”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.

The fact that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the said trademarks have been used for a long period of time prior to the registration of the disputed domain name indicate not only that the Respondent was aware of the Complainant’s business and trademark at the time of registration, but also that it registered the disputed domain name to mislead Internet users into thinking it is in some way connected, sponsored, endorsed by, or affiliated with the Complainant’s services.

The Complainant’s SUBSEA 7 trademark, included in the disputed domain name, has been used in commerce two decades prior to the registration of the disputed domain name, therefore it is unlikely that the Respondent was unaware of the Complainant’s rights when it registered the disputed domain name. See Subsea 7 Limited v. Mark Chris, darkknightspam, WIPO Case No. D2019-1554.

The Respondent provided no explanation as to why it registered the disputed domain name.

The Respondent has failed to make to date any genuine use of the disputed domain name. It appears from the evidence put forward by the Complainant that the website to which the disputed domain name resolves is a website of the Complainant. Redirecting the disputed domain name to the Complainant’s website supports a finding that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark (see section 3.1.4 of the WIPO Overview 3.0).

Furthermore, the Respondent availed of a privacy shield service to protect its identity. While the use of a privacy shield is not in any way objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. (Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357.)

In the Panel’s view these circumstances represent evidence of registration and use in bad faith of the disputed domain name. The Respondent failed to bring evidence as to the contrary. Consequently, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

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 <subsea7.center> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: October 15, 2020

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