WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Halliburton Energy Services, Inc. v. Robin Bernik
Case No. D2017-0783
1. The Parties
The Complainant is Halliburton Energy Services, Inc. of Houston, Texas, United States of America (“United States”), represented by Polsinelli PC, Polsinelli LLP, United States.
The Respondent is Robin Bernik of Eugene, Oregon, United States.
2. The Domain Name and Registrar
The disputed domain name <hallibrut0n.com> (the “Disputed Domain Name”) is registered with 1&1 Internet AG (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amendment to the Complaint on April 26, 2017.1
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 April 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 1, 2017. 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 was founded in 1919 and is now one of the world’s largest providers of products and services to the energy industry. With more than 50,000 employees, representing 140 nationalities in over 80 countries, the Complainant is involved in a range of activities related to oil and gas production.
As a leader in the global energy industry, the Complainant has expended effort in protecting its intellectual property rights. The Complainant has continually used the HALLIBURTON mark in commerce for more than 80 years and own numerous registrations of the HALLIBURTON mark in the United States, including United States Registration No. 2,575,819, registered on June 4, 2002. The Complainant also owns trademark registrations for other HALLIBURTON marks in the United States, in addition to more than 370 trademark registrations in 60 countries worldwide (the “HALLIBURTON Mark”). The Complainant’s annual revenues in 2015 and 2014 were USD 23.6 billion and USD 32.9 billion, respectively. As a result, the Complainant has become a recognized and respected brand in the industry and the HALLIBURTON Mark is a source of goodwill for the Complainant.
The Complainant has also registered numerous domain names incorporating the HALLIBURTON Mark, and maintains its official website at “www.halliburton.com”.
The Disputed Domain Name was registered by the Respondent on March 2, 2017. The Disputed Domain Name consists of slight, but intentional misspellings of the Complainant’s HALLIBURTON Mark. The Disputed Domain Name resolves to a landing page containing pay-per-click hyperlinks.
The Respondent has used the Disputed Domain Name to target employees of the Complainant in a fraudulent email and phishing scheme in which the Respondent attempts to have the Complainant’s employees make payments to the Respondent by impersonating senior leadership of the Complainant.
5. Parties’ Contentions
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- 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.
- 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
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(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 was 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 or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to those trademarks.
It is uncontroverted that the Complainant has established rights in the HALLIBURTON Mark based on both longstanding use and its numerous trademark registrations for the HALLIBURTON Mark in the United States and in many jurisdictions worldwide.
The Disputed Domain Name consists of a misspelled version of the HALLIBURTON Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. The Disputed Domain Name contains two variations of the Complainant’s HALLIBURTON Mark: (1) transposing the “u” and the “r”; and (2) replacing the letter “o” with the numeral “zero” (0). This is a typical case of typosquatting where the Disputed Domain Name is a letter or two different from the HALLIBURTON Mark, usually done in such a way that the omission or addition will not be noticed, but will come about by virtue of a typing error.
These changes to the HALLIBURTON Mark are insufficient to avoid confusing similarity. See Nintendo of America Inc. v. Max Maximus, WIPO Case No. D2000-0588. Other UDRP panels have similarly held that a mere addition of a minor misspelling or typographical error of a mark, does not avoid confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), paragraph 1.9.
Finally, the addition of a gTLD such as “.com” in a domain name may be technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the HALLIBURTON Mark.
Accordingly, 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 demonstrating rights or legitimate interests in that 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, paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its HALLIBURTON Mark. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent is improperly using the Disputed Domain Name for commercial gain as part of a phishing scheme to deceive the Complainant’s employees. In this fraudulent email and phishing scheme, the Respondent sent emails to employees of the Complainant in which the Respondent attempted to have the Complainant’s employees make payments to the Respondent by impersonating senior leadership of the Complainant. Such a phishing scheme cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Name. See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, 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 Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.
First, the Respondent’s phishing scheme to send the Complainant’s employees fraudulent emails purporting to come from senior management of the Complainant to induce them to make payments to the Respondent, evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s HALLIBURTON Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright, WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the disputed domain name in bad faith). Other UDRP panels have also found that email-based phishing schemes that use a third-party trademark in a domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy, WIPO Case No. D2015-2135; CMA CGM v. Diana Smith, supra.
Second, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence 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. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant’s HALLIBURTON Mark for commercial gain.
Third, based on the Respondent’s use of the Disputed Domain Name to impersonate the Complainant’s senior management, it is obvious that the Respondent knew of and specifically targeted the Complainant’s rights in its widely-used HALLIBURTON Mark when registering the Disputed Domain Name.
Finally, typosquatting has been shown to be evidence of bad faith in and of itself. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635.
Accordingly, 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, <hallibrut0n.com>, be transferred to the Complainant.
Lynda M. Braun
Date: June 13, 2017
1 In the amendment, the Complainant confirmed that it will “submit, with respect to any challenges that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the Disputed Domain Name that is the subject of this Complaint, to the jurisdiction of the courts at the location of the principal office of the Registrar (1and1) AND the domain name holder’s address as shown for the registration of the Disputed Domain Name subject of this Complaint in the Registrar’s WhoIs database at the time the Complaint is submitted to the Provider”, as indicated in Section IX. Mutual Jurisdiction of the Complaint.