WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Vitol Holding B.V. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Bill Philips
Case No. D2021-3404
1. The Parties
The Complainant is Vitol Holding B.V., Netherlands, represented by NLO Shieldmark B. V., Netherlands.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland, / Bill Philips, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <vitolfinance.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 14, 2021, 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 15, 2021, 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 October 15, 2021.
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 October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 16, 2021. 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 an energy and commodities trader and owns the following registered trademarks, among others: VITOL, International Trademark Reg. No. 01202452, registered on November 9, 2013 in international classes 1, 4, 6, 30, 35, 36, 37, 39; 40 and 42; and VITOL, European Union Trademark Reg. No. 017865708, registered on June 6, 2021 in international classes 1, 4, 36, 37 39, 40 and 42 (hereinafter collectively referred to as the “VITOL Mark”.
The Complainant registered the domain name <vitol.com>, which resolves to its official website at “www.vitol.com”. The Complainant’s website promotes and advertises the financial services that the Complainant offers.
The Disputed Domain Name was registered on August 10, 2021. When the Complainant filed the Complaint, the Disputed Domain Name resolved to a website that featured a platform for crypto trading and investments.1 The Respondent’s website, submitted by the Complainant as an annex to the Complaint, stated that the Respondent’s company is registered in Hungary, although the Complainant claimed that this was not true.
On September 21, 2021, the Complainant’s attorney sent a cease-and-desist letter to the Respondent, requesting that the Respondent take down its website and cease use of the VITOL Mark. On September 27, 2021, the Complainant’s attorney sent a reminder email to the Respondent, but never received a reply.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- the Disputed Domain Name is confusingly similar to the VITOL Mark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark, and second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the VITOL Mark.
It is uncontroverted that the Complainant has established rights in the VITOL Mark based on its several years of use as well as its registered trademarks for the VITOL Mark in various jurisdictions worldwide. The general consensus is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the VITOL Mark.
The Disputed Domain Name consists of the VITOL Mark in its entirety followed by the dictionary or descriptive term “finance”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. For example, numerous UDRP decisions have reiterated that the addition of a dictionary or descriptive term to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s VITOL Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its VITOL Mark. Based on the record, the Disputed Domain Name is not related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the initial use made of the Disputed Domain Name to resolve to the Respondent’s website that offered crypto trading and investment services that competed with the Complainant’s financial services, the Panel finds that the Respondent was not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Past UDRP panels have held that using a disputed domain name to resolve to a website offering competing services to those of the complainant is not a use indicative of rights or legitimate interests. On the contrary, here, the Respondent used the VITOL Mark for commercial gain and to deceive Internet users who mistakenly believed that they arrived at the Complainant’s official website.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the VITOL Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it effectively suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, based on the circumstances here, the Panel concludes that the Respondent registered and initially was using the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s VITOL Mark as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Name’s resolving webpage. The Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its VITOL Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Second, the registration of a domain name that reproduces a trademark in its entirety (being identical or confusingly similar to such trademark) by an individual or entity that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Third, as of the writing of the Decision, when the Disputed Domain Name resolved to a landing page that stated that it is a “dangerous scam page” that contains “malicious software”, this also demonstrated bad faith use of the Disputed Domain Name by the Respondent. See Carvana, LLC v. Domain Privacy, Above.com Domain Privacy, WIPO Case No. D2021-0290 (using the disputed domain name to disseminate malware indicates bad faith per se).
Finally, the lack of response by the Respondent to the cease-and-desist letters sent by the Complainant’s attorney supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter may be considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <vitolfinance.com> be transferred to the Complainant.
Lynda M. Braun
Date: November 24, 2021
1 As of the writing of the Decision, however, the Disputed Domain Name resolved to a landing page stating that it is a “dangerous scam page” that can contain malicious software.