WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Anadarko Petroleum Corporation v. John Smith, CGU
Case No. DCO2013-0033
1. The Parties
Complainant is Anadarko Petroleum Corporation, Houston, Texas, United States of America, represented by Adams and Reese LLP, United States of America.
Respondent is John Smith, CGU, Cottonwood Heights, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <anadarko.co> (“Domain Name”) 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 December 9, 2013. On December 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2014
On January 14, 2014, the Center received an email purportedly from Respondent but not copied to Complainant stating the following:
“This is the first I have heard of such a dispute. My client has the rightful claim of this domain. His business is completely unrelated because it is in the healthcare field. The plaintiff has no ground to use said name in this category.
If they would like to purchase the domain without dispute my client is willing to sell it for $900.
On January 15, 2014, the Center responded to the email, copying Complainant, stating that a copy of the Written Notice, Complaint, and Notification of the Commencement of Administrative Proceeding, were sent by the Center on December 17, 2013 to Respondent using the contact details made known to the Center by Complainant and by the Registrar. The Center further stated that if Respondent wished to make a late Response to the Complaint, the Center would bring the Response to the Panel’s attention (when appointed), and it would be at the sole discretion of the Panel to consider it. Respondent did not file such a Response.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on January 24, 2014. 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
Complainant is a large (USD13.4 billion revenues in 2013) U.S. Fortune 500 company engaged in diverse lines of business, including oil and gas exploration, drilling, and production; insurance and financial services in the fields of industrial leasing and purchasing; computer, science and legal services; lubricants, crude oil and natural gas; building construction and repair services; advertising and business services; transportation and storage services; and other related goods and services.
Complainant owns 21 subsisting trademark registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) using the designation “Anadarko” alone or in combination with other words and designs. The registrations include, among others, the following:
ANADARKO, Reg. No. 1,435,026, Reg. Date March 31, 1987;
ANADARKO, Reg. No. 3,602,509, Reg. Date April 7, 2009;
ANADARKO, Reg. No. 3,602,566, Reg. Date April 7, 2009;
ANADARKO, Reg. No. 4,120,983, Reg. Date April 3, 2012;
ANADARKO PETROLEUM CORPORATION, Reg. No. 3,587,176 Reg. Date March 10, 2009.
Complainant has owned and operated a website using the domain name <anadarko.com> since at least 1994.
Respondent registered the Domain Name on November 1, 2013. The Top Level Domain (“TLD”) “.co” in the Domain Name is the country code for Colombia. Complainant has operations in Colombia.
The Domain Name does not resolve to a website.
5. Parties’ Contentions
Complainant contends that it has rights in the trademarks ANADARKO and ANADARKO PETROLEUM CORPORATION by reason of their registrations by the USPTO, the continuous use in commerce of the ANADARKO trademark since 1985 and the ANADARKO PETROLEUM CORPORATION trademark since 1998. Complainant claims that its trademarks have developed extensive goodwill and favorable consumer recognition and are both distinctive and famous within the meaning of U.S. trademark law.
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s trademarks, the “.co” TLD being irrelevant to the analysis.
Complainant further contends that Respondent has no rights or legitimate interests in the Domain Name, citing the facts that Respondent has never been known by the Domain Name, has not used or made demonstrable preparations to use the Domain Name, is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain; and that Complainant has not licensed Respondent to use Complainant’s trademarks or otherwise authorized Respondent to act on Complainant’s behalf.
Lastly, Complainant contends that Respondent registered and is using the Domain Name in bad faith. Complainant asserts that Respondent knew or should have known of Complainant’s prominence in the business world when the Domain Name was registered and that Respondent registered the Domain Name to prevent Complainant from registering a domain name that reflects Complainant’s ANADARKO mark, which Complainant contends evidences bad faith under paragraph 4(b)(ii) of the Policy.
Respondent did not formally reply to Complainant’s contentions. Following the Center’s notification of Respondent’s default, Respondent sent an email to the Center, without copy to Complainant, stating that Respondent had not previously heard of the dispute, that Respondent’s client is involved in the healthcare business, that Complainant has no rights in “this category”, and offering to sell the Domain Name to Complainant for USD900.
6. Discussion and Findings
Turning first to procedural issues, the Panel finds that Respondent was given proper notice of the proceeding. The evidence indicates that the Center sent the Complaint in electronic form to the email address provided in the registration contact information, […]@gmail.com, and the Written Notice in hard copy by courier to Respondent at the Cottonwood Heights, Utah, United States of America address provided in Respondent’s registration information available in the publicly available WhoIs database and from the Registrar. The record further supports actual delivery by both means. The Panel thus considers that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Respondent did not file a timely Response to the Complaint, was considered in default by the Center and was notified of that default. As noted above, the day after the default notice issued, Respondent submitted an unsolicited cryptic email to the Center, purportedly “signed” by Registrant John Smith, but sent from the email address Allen Andersen without copy to Complainant. The Center then invited Respondent to submit a late Response which the Center would make known to the Panel when appointed. Respondent submitted nothing further, and the Panel was subsequently appointed.
The Panel considers Respondent to remain in default. The email submitted to the Center on January 14, 2014, does not qualify as a Response under the Rules in that, most notably, it does not respond specifically to the statements and allegations contained in the Complaint, does not provide required contact information for Respondent or of any representative authorized to act for Respondent, does not state that a copy has been sent to Complainant, and does not certify that the information contained in the Response is complete and accurate. See Rules, paragraph 5(b). The email is in any event troublesome in that it indicates that the named Registrant, one John Smith, is actually acting for another unidentified “client” while the sender appears to be one Allen Andersen who is unidentified.
While the email is not considered a formal Response, rather than ignore the document altogether, the Panel, in its discretion under paragraph 10 of the Rules, will admit the document to the case record for whatever evidentiary significance it may have. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under the Rules, paragraph 14(b), a respondent’s failure to answer entitles the panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has legal rights in its ANADARKO and ANADARKO PETROLEUM CORPORATION trademarks. Those marks are registered by the USPTO on the Principal Register of the United States and are thus presumed valid under U.S. law. See WIPO Overview 2.0, paragraph 1.1 (ownership of a registered trademark generally satisfies the Policy requirement of having trademark rights).
The Domain Name is identical or confusingly similar to one or more of Complainant’s trademarks. The Panel need not consider them all. The Domain Name incorporates the ANADARKO trademark in its entirety and with the correct spelling and is thus identical for purposes of the comparison and likely to cause confusion for the Internet user as to the source and affiliation of the Domain Name.
The Domain Name adds the TLD “.co” to Complainant’s trademark. TLD’s are generally ignored for purposes of determining confusing similarity, because they are necessary to any domain name, they are generic and they fail to distinguish the domain name from the trademark. See Societe Nationale des Chemins de Fer Francais, SNCF v. Transure Enterprise Ltd / Bargain Register Domain Privacy, WIPO Case. No. D2011-0447 (“the Panel does not consider, when analyzing the identity or similarity, the suffix in this case “.com”, because it is a necessary component of the Domain Name and does not give any distinctiveness.”). In this case, the TLD is the country code for Colombia, but it is a code for which anyone can register and which is marketed and sold by registrars, including the Registrar in this case, as a shortened form of “.com” or to suggest “company” or “corporation” rather than the name of the country.1 The Panel finds that the “.co” TLD is not sufficient to distinguish the Domain Name from Complainant’s trademarks.
Complainant has demonstrated that the Domain Name is identical or confusingly similar to trademarks in which Complainant has rights and has thus established the first element of its case.
B. Rights or Legitimate Interests
Complainant bears the overall burden to prove that Respondent has no rights or legitimate interests in the Domain Name. See WIPO Overview 2.0, paragraph 2.1. However, where a complainant makes a prima facie case that the respondent does not possess such rights or legitimate interests, the burden of production shifts to the respondent to demonstrate that it does in fact possess such rights or legitimate interests. Where, as here, a respondent fails to come forward with allegations or evidence to demonstrate that it possesses such rights or legitimate interests, the complainant’s prima facie case will usually be found sufficient to meet the complainant’s overall burden of proof.
Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by showing one of the following circumstances:
(i) before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or
(ii) Respondent has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant can make out a prima facie case by negating such circumstances. See Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Complainant’s evidence negates that Respondent has used or prepared to use the Domain Name in connection with a bona fide offering or goods and services. There is nothing in the record to indicate that Respondent used or made any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Respondent has no website, and there is nothing to show any offering of goods or services. In the email referenced above, Respondent says that he has a client in the healthcare field, but in the circumstances, of this case, based on the available record, this is insufficient to establish who the client is or how the Domain Name would be used to make any bona fide offering of goods or services, or that Respondent has any rights or legitimate interests in the Domain Name.
Similarly, the record does not show that Respondent is making any sort of noncommercial or fair use of the Domain Name.
Complainant contends that Respondent is not commonly known by the name “Anadarko” and has not been licensed or authorized by Complainant to use Complainant’s trademark or to act for Complainant. Nothing in the record contradicts Complainant’s contentions, and the Panel thus accepts them as fact.
Respondent having failed to demonstrate any of the factors under paragraph 4(c) of the Policy, the Panel finds that Complainant’s prima facie case meets its burden under paragraph 4(a)(ii) of the Policy and considers that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Previous UDRP panels have found that where a domain name is so obviously connected with a well-known trademark its very use by someone with no connection to the trademark suggests opportunistic bad faith. LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494, Sanofi-Aventis v. Nevis Domains LLC., WIPO Case No. D2006-0303.
The evidence of record shows that Complainant is a large Fortune 500 company based in the United States with a well-known name and trademark. Respondent appears also to be based in the United States. Under the circumstances, the Panel considers it a reasonable inference that Respondent had knowledge of Complainant, Complainant’s name and its ANADARKO trademark at the time he registered the Domain Name, or Respondent would not have chosen to use the ANADARKO mark in the Domain Name. See WIPO Overview 2.0, paragraph 3.4. Further, as discussed above, Respondent has demonstrated no rights or legitimate interests in the Domain Name. The Panel thus considers the Domain Name to have been registered in bad faith.
Inasmuch as Respondent apparently has not used the Domain Name in connection with any website, the question of bad faith use requires close scrutiny. Complainant cites paragraph 4(b)(ii) of the Policy, contending that Respondent registered the Domain Name to prevent Complainant from registering a domain name that reflects the ANADARKO trademark. Paragraph 4(b)(ii) provides that the following shall be considered evidence of registration and use in bad faith:
you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.
It may be, that is why Respondent registered the Domain Name, but there is no evidence to support such a motive, nor is there any showing of a pattern of such conduct on the part of Respondent. See WIPO Overview 2.0, paragraph 3.3. The Panel cannot find bad faith use on this basis. This does not end the matter, however.
Respondent opened a new issue subsequent to the filing of the Compliant which the Panel cannot ignore. Paragraph 4(b)(i) of the Policy provides that the following is evidence of bad faith registration and use:
circumstances that you have registered . . . the 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 your documented out-of-pocket costs directly related to the domain name.
In his unsolicited email to the Center on January 14, 2014, Respondent offered to sell the Domain Name to Complainant for USD900, which sum is far in excess of the cost of registering the Domain Name. The Registrar’s website presently offers registration of “.co” domain names for USD12.99. There is thus evidence of bad faith registration and use within the meaning of paragraph 4(b)(i) of the Policy.
In addition, the record justifies looking at this case as one of passive holding in bad faith. While Respondent has not made active use of the Domain Name in connection with a website, such passive holding does not in itself prevent a finding of bad faith. WIPO Overview 2.0, paragraph 3.2. The Panel must consider all circumstances of the case to determine whether they amount to Respondent acting in bad faith. Here, the Panel considers it most relevant that:
Complainant’s trademark is well known, especially in the United States where both parties are located;
In view of Complainant’s trademark and the confusion that likely result from the Domain Name, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name that would not be illegitimate;
The Domain Name registration was in bad faith, as considered above;
Respondent claimed that he did not have notice of the dispute until after being notified that he was in default when it appears that proper notice was in fact given and delivered;
The record casts doubt on the accuracy of Respondent’s registration information. The named Registrant, John Smith, even assuming that name is not fictitious, appears to be acting for an unidentified client while Smith’s one communication appears to come not from him but from one Allen Andersen, whose relationship to Registrant and the Domain Name are also unclear; and
Respondent failed or refused to submit a formal Response to the Complaint in this proceeding, even when invited by the Center to do so, from which it can be inferred that Respondent did not have legitimate defenses to the Complaint.
The Panel considers the foregoing facts and circumstances in this case to indicate bad faith in the passive holding of the Domain Name. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; TV Azteca, S.A.B. de C.V. v. Spiral Matrix, WIPO Case No. D2011-0008.
Based on Respondent’s offer to sell Complainant the Doman Name in an amount well in excess of what could reasonably be assumed to be Respondent’s out-of-pocket costs and the facts and circumstances of passive holding described above, the Panel considers that Respondent both registered and is using the Domain Name in bad faith. Complainant has, therefore, established the third and final element of its case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <anadarko.co>, be transferred to Complainant.
John R. Keys, Jr.
Date: February 7, 2014