WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Perenco Holdings, Perenco SA v. Joseph Ferdows
Case No. DCO2021-0052
1. The Parties
The Complainants are Perenco Holdings, United Kingdom and Perenco SA, France, represented by Herbert Smith Freehills, France.
The Respondent is Joseph Ferdows, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <peren.co> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 23, 2021. On June 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 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 July 8, 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 a first amended Complaint on July 8, 2021, requesting the transfer of the disputed domain name instead of its cancellation. The Complainant filed a second amended Complaint on July 15, 2021, incorporating the disclosed registrant and contact information.
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 July 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 7, 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 First Complainant, Perenco Holdings, is a company incorporated in the United Kingdom; the Second Complainant, Perenco SA, is a société anonyme incorporated in France. The First Complainant and the Second Complainant (jointly, “Complainants”) are part of the Perenco group of companies (“Perenco Group”). The original company in the Perenco Group was created in 1975, and was the first independent petrol and gas company in Europe. The Perenco Group is now an international group with companies located around the world, including the Complainants.
The First Complainant operates the Perenco Group’s official website, which is available in French and English, using the domain name <perenco.com>. The Second Complainant owns European Union Trademark Registration No. 10468361 (filed on November 22, 2011, and registered on May 9, 2012) and United Kingdom Trademark Registration No. 910468361 (filed on November 22, 2011, and entered into the register on May 9, 2012) for the stylized trademark PERENCO. The Complainants and all of their assets, including the Perenco Group’s official website at “www.perenco.com” and the PERENCO trademark, belong to the Perenco Group.
The disputed domain name was registered on December 27, 2019. The Complainants have provided screenshots, taken on May 21, 2021, showing that the disputed domain name resolved to a website that is almost identical to the Complainants’ official website. At the time of this decision, it appears that the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to a trademark in which they have rights because: (i) the Respondent uses the “.co” country-code Top-Level Domain (“ccTLD”) in conjunction with the expression “peren” to create a domain name that is confusingly similar to the Complainants’ PERENCO trademark; and (ii) the disputed domain name is composed of the PERENCO trademark divided in two by a dot before the last syllable, with the dot being the only element that prevents the disputed domain name from being identical to the PERENCO trademark.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) to the best of the Complainants’ knowledge, no third party entity is known in the course of business under the disputed domain name or is the holder of any trademark registration for PERENCO; (ii) the Complainants have not granted any license to the Respondent to use the PERENCO trademark, and have not authorized the Respondent to register or use the disputed domain name; (iii) at the time of this Complaint, the disputed domain name resolved to a website that is almost a perfect copy of the Perenco Group’s official website, with the two landing pages almost identical, the “About Us” section using the same language, pictures and graphic design as in the Perenco Group’s official website, and the goods and services offered in the “Trading” section being identical in nature, price and availability around the world to the goods and services offered by the Perenco Group; and (iv) on no part of the website resolving from the disputed domain name does the Respondent advertise, offer or otherwise promote goods or services distinguishable from Perenco Group’s activities.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the term “peren” and the ccTLD “.co” taken together create the word “perenco”, which is the domain name used by the Perenco Group for its official website at “www.perenco.com”; (ii) by registering a domain name that is almost identical to the Perenco Group’s domain name, the Respondent is expecting to divert traffic from the Complainants’ official website; (iii) the PERENCO trademark is neither descriptive nor evocative, and refers to the corporate names of the Complainants, which confirms that the Respondent knew that by registering the disputed domain name it was infringing the Complainants’ prior rights; (iv) the Complainants’ PERENCO trademark is widely reproduced on the website resolving from the disputed domain name, and remains visible on the front page during the Internet user’s browsing on the website; (v) the disputed domain name is not currently being operated for legitimate business activities but resolves to a website mirroring the Perenco Group’s official website, which Internet users will believe they are browsing; (vi) potential clients are invited in a section titled “Contact us” to address enquiries to the email addresses “[...]@peren.co” or “[...]@peren.co”, which by all appearances are owned and operated by the Respondent; and (vii) the goal of the Respondent is not only to use the disputed domain name to impersonate the Complainants and the Perenco Group as a whole, but in so doing, to divert the Complainants’ potential customers and redirect them to the Respondent and potentially third parties.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Complainants’ Standing
The Second Complainant owns the trademark registrations on which the Complaint is based, and is a member of the Perenco Group of companies of which the First Complainant is also a member. As explained in section 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a trademark owner’s affiliate, such as a subsidiary of a parent or of a holding company, is considered to have rights in a trademark under the UDRP for the purposes of standing to file a complaint. The Panel considers that this principle of affiliation with a trademark owner extends to a co-member of a group of companies of which the trademark owner is a member. Accordingly, the Panel finds that the First Complainant has rights in the Second Complainant’s trademark registrations, and therefore that the Complainants’ have standing to file this Complaint jointly.
B. Identical or Confusingly Similar
The disputed domain name consists of the string “peren” and the ccTLD “.co”, which considered together is the textual component of the Second Complainant’s registered stylized trademark PERENCO. As explained in section 1.11.3 of the WIPO Overview 3.0, where the applicable Top-Level Domain (“TLD”) and the second-level portion of the domain name in combination contain the relevant trademark, panels consider the domain name in its entirety for the purposes of assessing confusing similarity. The textual component of the Second Complainant’s registered stylized trademark is clearly recognizable within the disputed domain name. The addition of a dot between the strings “peren” and “co” does not prevent a finding of confusing similarity of the disputed domain name with the Second Complainant’s trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
C. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainants, is not otherwise affiliated with the Complainants, and has not been authorized by the Complainants to use the PERENCO trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainants shows that the disputed domain name has been used to resolve to a website that very closely mimics the official website of the Perenco Group in its look, language and offering of products. Given the confusing similarity of the disputed domain name to the Complainants’ trademark and the absence of any relationship between the Respondent and the Complainants, this is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainants have put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Second Complainant first registered the PERENCO stylized trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainants’ trademark, given that the trademark is distinctive and has been heavily used, and that the disputed domain name consists solely of the textual component of the trademark with a dot between the first five letters and the last two letters. Furthermore, as the disputed domain name was used to resolve to a website that very closely mimics the Perenco Group’s official website operated by the First Complainant, the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainants. The fact that the disputed domain name does not currently appear to resolve to an active website does not prevent a finding of bad faith. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and the request of the Complainants, the Panel orders that the disputed domain name, <peren.co>, be transferred to the Second Complainant, Perenco SA.
Andrew F. Christie
Date: September 21, 2021