WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maersk Oil & Gas A/S v. Joseph Totman

Case No. D2014-2194

1. The Parties

The Complainant is Maersk Oil & Gas A/S of Copenhagen, Denmark, represented by Crowell & Moring, LLP, Belgium.

The Respondent is Joseph Totman of Glen Allen, South Africa.

2. The Domain Name and Registrar

The disputed domain name <maerskoilus.com> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2014. On December 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 13, 2015.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on January 29, 2015. 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 a Danish oil and gas company which owns the following trademark registrations, used in connection with its business (annex 5 to the Complaint):

- International trademark registration for MAERSK, number 868307 registered on August 25, 2005 in class 39;

- International trademark registration for MAERSK, , number 717987 registered on August 9, 1999 in class 39;

- US trademark registration for MAERSK, number 3474622 registered on July 29, 2008 in classes 35, 36, 37, 39, 40, and 42

The Complainant actively promotes its MAERSK trademark through its websites linked to the domain names <maersk.com> and <maerskoil.com>.

The disputed domain name was registered on October 10, 2014 and it resolves to a website, which is almost an exact replica of the Complainant's genuine "www.maerskoil.com" website. (annex 10 to the Complaint).

5. Parties' Contentions

A. Complainant

The Complainant contends that, by virtue of the Complainant's long and extensive use, the MAERSK mark is very well-known all over the world.

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's registered mark, as it incorporates the entirety of the Complainant's MAERSK trademark, with the mere addition of the term "oil", which refers to the Complainant's business, and "us", which is a geographical indicator; such minor additions are not sufficient to distinguish the disputed domain name from the well-known trademark owned by the Complainant or to avoid confusion. On the contrary, the addition of the suffixes "oil" and "us" strengthen the association with the Complainant and enhance the level of confusion of Internet users.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name and has not acquired trademark or service mark rights in that name. The Respondent did not have any permission or authorization or license to use the MAERSK trademark as part of the disputed domain name or in any other way.

The Respondent is not making a bona fide or legitimate use of the disputed domain name: indeed the disputed domain name is used to host a website which is almost an exact replica of the Complainant's genuine <maerskoil.com> website.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.

The Respondent chose the disputed domain name with full knowledge of the Complainant's rights therein, as is proved by the following circumstances:

- The content provided on the website linked to the disputed domain name refers to the Complainant's business. The website is almost an exact replica of the Complainant's genuine website;

- The reputation of the Complainant's trademarks follows directly from the fact that the Respondent has simply copied the Complainant's word marks and figurative trademarks on the website linked to the disputed domain name;

- A simple trademark search at the time of the registration of the disputed domain names would have revealed the Complainant's trademark registrations. Also, a simple search on the Internet would have revealed the Complainant's presence and trademarks.

There is no reason for the Respondent to use the MAERSK trademark in the disputed domain name except to intentionally attract, for commercial gain, Internet users to its website, by creating a high likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website and emails originating from the Respondent, exploiting the Complainant's considerable goodwill and reputation.

Moreover, by registering the disputed domain name, the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name and even this circumstance is an indicator of the Respondent's bad faith.

Finally, the fact that the Respondent did not reply to the Complainant's cease and desist letter sent on December 4, 2014 is also an indication of bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) that the disputed domain name registered by the Respondent 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 registered by the Respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <maerskoilus.com> is confusingly similar to the Complainant's MAERSK trademark, a distinctive and well-known mark in which the Complainant has established rights through registration and extensive use all over the world.

The disputed domain name incorporates the Complainant's MAERSK trademark in its entirety; the only differences are the addition of the generic term "oil" and the suffix "us".

The addition of a purely descriptive/generic term to a well-known mark is not enough to prevent confusing similarity between the domain name and the incorporated trademark (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987; for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709, PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865) but may actually increase the likelihood of confusion.

Indeed, the Panel finds that the addition of the generic term "oil", which clearly relates to the Complainant's business activity, is likely to enhance the confusion and to lead customers to believe that the disputed domain name is effectively linked to, affiliated with, or connected to the Complainant (see America Online Inc. v. Yetech Communication Inc., WIPO Case No. D2001-0055; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; and Volkswagen AG v. Emir Ulu, WIPO Case No. D2005-0987).

Similarly, concerning the addition of the geographical indicator "us", which clearly refers to United States of America, does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark; on the contrary, also the adding of the term "us", potential geographical location of the Complainant's business, is likely to enhance the confusion and to lead Internet users to believe that the disputed domain name is effectively linked to, affiliated with or connected to the Complainant (for the addition of a geographical indicator see Rolls-Royce Plc v. Hallofpain, WIPO Case No. D2000-1709; PepsiCo Inc. v. QWO, WIPO Case No. D2004-0865; Swarovski Aktiengesellschaft v. Huge/ Carol Carol, WIPO Case No. D2014-0406; and, Statoil ASA v. Ferro Group, Phelirin Ferro, WIPO Case No. D2014-1044).

The Panel believes Internet users without awareness of the content of the website at the disputed domain name may think that it is in some way connected and associated with the Complainant (see Covance, Inc. and Covance Laboratories Ltd v. The Covance Campaign, WIPO Case No. D2004-0206; and CBS Broadcasting Inc., f/k/a CBS Inc. v. Nabil Z. aghloul, WIPO Case No. D2004-0988).

Finally, with regard to the generic Top-Level Domain (gTLD) ".com", as it was established in many previous UDRP decisions (see A.P. Møller v.Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for determining whether it is identical or confusingly similar; indeed, the gTLD is a necessary component of the disputed domain name and does not give any distinctiveness.

There is no doubt that the disputed domain name <maerskoilus.com> is confusingly similar to the Complainant's trademark. Therefore, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant's contentions. Therefore, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation 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 prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business, or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate non-commercial 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.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.

The Complainant states, and proves by submitting documents that the MAERSK trademark has been used worldwide for many years and has become a well-known trademark. Therefore, in this Panel's view, the Respondent must have been aware of the Complainant's existence when it registered the disputed domain name. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred from the fact that the Respondent registered the disputed domain name incorporating the MAERSK trademark in its entirety, with the mere addition of the generic term "oil", which clearly relates to the Complainant's business activity and the geographical wording "us" referring to United States of America, and thus, to a country in which the Complainant conducts business.

Moreover, in this Panel's view, the Respondent's awareness of the Complainant's activity and rights is proven by the fact that the disputed domain name resolves to a website that is almost an exact replica of the Complainant's official website

Moreover, the Complainant states that the Respondent has no connection or affiliation with the Complainant and no license or authorization of any kind has been given by the Complainant to the Respondent to register the disputed domain name or to use the trademark MAERSK in any other manner. Since the Respondent has no permission from the Complainant, the Panel finds that based on the available evidence, the Respondent's use of the disputed domain name is without rights or legitimate interests.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. Indeed, the Respondent has registered and is using the disputed domain name with the clear intention to use the Complainant's mark and name for its own profit, by misleading and diverting consumers to its own website. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.

Finally, given the circumstance of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the disputed domain name may also be inferred from the fact that the Respondent filed no Response. According to previous UDRP decisions, "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493; and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

The Complainant's name, trademark, and activities have been deemed well-known, and in this Panel's view the Respondent must have been aware of the Complainant's existence when it registered the disputed domain name. And indeed, the Respondent's awareness of the Complainant's activity and rights may be inferred from the fact that the Respondent registered the disputed domain name incorporating the MAERSK trademark in its entirety, with the mere addition of the generic term "oil", which clearly relates to the Complainant's business activity, and the geographical term "us" referring to United States of America and, thus, to a country in which the Complainant conducts business.

In the light of the above, and in line with other prior decisions (see Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Cliquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; and Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395), the Panel believes that, in the absence of any right or legitimate interest and lacking any contrary evidence by the Respondent, the Respondent's registration of a domain name identical to the Complainant's well-known trademark suggests opportunistic bad faith (see MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412; Mastercard International Incorporated v. Total Card Inc., WIPO Case No. D2007-1411; see also Lancôme Parfums et Beauté & Cie, L'Oréal v. 10 Selling, WIPO Case No. D2008-0226).

Moreover, as referred by the Complainant, the Respondent did not reply to Complainant's cease and desist letter sent on December 4, 2014. According to previous UDPR decisions, this Panel also finds that "the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith" (see Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787; News Group Newspapers Ltd and News Network Ltd v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-12421).

Indeed, the Respondent has maintained the website at the disputed domain name despite the Complainant's objections.

Such silence and ongoing cybersquatting are further evidence of the Respondent's bad faith (see Compiere Inc. v. James Zhong, WIPO Case No. D2007-0130; Compagnie Generale Des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022; and RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242).

Concerning the use of the disputed domain name, as already indicated above, the Complainant has proven that it resolves to a website, which is almost an exact replica of the Complainant's official website; moreover the "Contact Us" section shows the following sentence in big characters: "CLICK HERE TO CONTACT US". When clicking on that phrase, a pop-up window opens which offers the possibility to send an email to an unknown recipient.

The Panel is persuaded by the evidence of record that the Respondent is using the disputed domain name to attract Internet users for commercial gain by using the Complainant's MAERSK trademark. Indeed, in the Panel's opinion, the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant's products and to obtain information about the Complainant's activities, to its own website, by creating a likelihood of confusion with the Complainant's trademark and business, as to inter alia, the source of its website and obtaining revenues from the diverted traffic (see Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; Florida Department of Management Services v. Anthony Gorss (or AGCS), WIPO Case No. D2009-1194; and Giorgio Armani S.p.A. v. Daulet Tussunbayev, WIPO Case No. D2011-2082).

Finally, according with the Complainant's opinion, also in the Panel's view the Respondent's bad faith is also demonstrated by the fact that, by registering the disputed domain name, the Respondent prevents the Complainant, as the holder of a trademark, from reflecting its mark in a corresponding domain name. The effect of the registration is to affect the business of the Complainant by attracting visitors looking for information about the Complainant or its marks and creating difficulties for persons searching the Internet (See Bulmers Limited, Wm. Magner Limited v. Piri Jaroubek N.A., WIPO Case No. D2009-1369).

In light of the above circumstances, the Panel is satisfied that the third element under paragraph 4(a) of the Policy is met and that the disputed domain name <maerskoilus.com> 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 <maerskoilus.com> be transferred to the Complainant.

Alessandra Ferreri
Sole Panelist
Date: February 12, 2015