Hess Corporation v. S. Farag
Claim Number: FA1910001867790
Complainant is Hess Corporation (“Complainant”), represented by Suzanne Hengl of Baker Botts L.L.P., New York, USA. Respondent is S. Farag (“Respondent”), UAE.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hessoil.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2019; the Forum received payment on October 21, 2019.
On October 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hessoil.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hessoil.org. Also on October 23, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 12, 2019.
On November 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant Hess Corporation, an integrated oil and gas company with its headquarters in New York, NY, has been in the business of exploration and production of crude oil and natural gas around the world for many decades since its predecessor was incorporated in 1920.
2. The “HESS brand has been continuously used since at least as early as 1933.”
3. “As a result of Complainant’s longstanding, prominent use worldwide, Complainant’s HESS mark is well-known, famous, and exclusively associated with Complainant.”
4. In recognition of its trademark rights, the United States Patent and Trademark Office (“USPTO”) has issued Complainant multiple U.S. Trademark Registrations for the mark HESS (“the HESS Mark”) and variants, including, among others, US Trademark Registration. No. 832,393, registered July 25, 1967, for petroleum products in International Class 4 and showing use of the HESS Mark since at least as early as December 31, 1933; “US Reg. No. 1774017 for HESS & Design covering products including “petroleum products, namely, gasoline, diesel fuel, fuel oil, motor oil, automatic transmission fluid, jet fuel and kerosene”, filed June 10, 1992;” US Reg. No. 3310764 for HESS & Design covering products including “petroleum products, namely, gasoline, diesel fuel, fuel oil, motor oil, jet fuel and kerosene, heating oil, and natural gas” and services including “oil, gas and mineral exploration”, filed December 4, 2006; and US Reg. No. 3394038 for HESS & Design covering products including “petroleum products, namely, gasoline, diesel fuel, fuel oil, motor oil, jet fuel and kerosene, heating oil, and natural gas” and services including “oil, gas and mineral exploration”, filed December 6, 2006.”
5. Complainant has also registered the HESS Mark in many countries around the world, including among others, Italy and Libya, countries referenced by Respondent on its infringing website accessed through the disputed domain name as places where Respondent does business.
6. Complainant has registered and owns numerous domain names incorporating the HESS Mark, including, “HESS.COM,” used to access its website at www.hess.com, as well as “HESSOILS.COM,” “HESSOIL.NET,” “HESSOILANDGAS.COM,” “HESSEOIL.COM,” “HESSOILAPP.COM,” “HESS-OIL.CN,” and “HESSGASSTATION.COM” among others.
8. The disputed domain name “resolves to an active website for “Hessoil Group,” an alleged oil and gas products and services company purportedly based in Italy, Libya, and the UAE.”
9. “The website prominently features a “Careers” page on which it solicits job-seekers to provide personally identifying information, including full name, date of birth, address, and phone number.”
10. The disputed domain name website “is used to advertise a sham operation which improperly uses Complainant’s valuable intellectual property to create confusion and a false association with Complainant.”
11. “The domain and website have no relationship to Complainant, the registration of the Infringing Domain Name has not been authorized by Hess, and Respondent’s use of the site is neither a bona fide offering of goods and services nor a legitimate noncommercial use.”
12. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because:
a) The HESS Mark is a well-known trademark worldwide in which Complainant has established rights through its long and extensive use as evidenced by the numerous trademark registrations submitted by Complainant;
b) The disputed domain name incorporates and is dominated by Complainant’s famous HESS mark in its entirety.
c) “The additions of the generic term OIL and the gTLD “.org” are of limited, if any, distinguishing trademark significance” and oil is one of the goods offered by, and commonly associated with, Hess in connection with its use of the HESS Mark.
13. Respondent has no rights or legitimate interests in the disputed domain name because:
a) “Respondent has not been commonly known by <hessoil.org> in any capacity, and could not have been, given Complainant’s long-time and extensive worldwide rights in the HESS mark in connection with oil- and gas- related products and services, included in its registered trademark rights in Italy and Libya, two of the countries in which Respondent purports to have operations.”;
b) “Complainant has never granted Respondent permission to use the HESS mark or any variant and has never authorized Respondent to register or use the [disputed domain name].”
c) Respondent’s website provides business locations that do not exist or point to locations where there are no operating offices, emails at the site are nonfunctional, and the “Careers’ page solicits users to provide personally identifying information, including full name, date of birth, address, and phone number, but provides no response to the information submitted, typical of a phishing site; and
d) “Respondent is trading off Complainant’s well-known mark to masquerade as Complainant and trick members of the public into navigating to its website and providing Respondent with valuable and sensitive personally identifiable information”.
14. The disputed domain names have been registered and are being used in bad faith because:
a) When Respondent registered the disputed domain name on February 17, 2019, in light of Complainant and its predecessor’s widespread use and registration of the HESS mark for nearly a century, Respondent undoubtedly had actual or, at minimum, constructive knowledge of Complainant’s ownership prior to registering the subject domain name.
b) Given that Complainant’s HESS Mark is highly distinctive and famous worldwide and has been continuously and extensively used since at least as early as 1933 in connection with Complainant’s petroleum products “Respondent has taken advantage of confusing similarity with Complainant’s mark, using it prominently on its website and in the domain name <hessoil.org> to increase traffic to its website”; and
d) Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent attempts to masquerade as Complainant in order to conduct a phishing scheme.
B. Respondent
In its one-page document, Respondent makes the following contentions
1. that it is “an oil services company registered in Libya under registration No. 4054132”
2. that in the disputed domain name each letter in h.e.s.s corresponds to the first letter of first names of the founders of the company, and oil to indicate oil services.
3. That the document submitted in Arabic constitutes a valid trading license for Respondent registered in Libya.
After reviewing both Complainant's and Respondent's submissions, this Panel finds the following:
(1) the domain name registered by Respondent is confusingly similar to a mark in which Complainant has established trademark rights;
(2) Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The at-issue domain name is confusingly similar to a mark in which the Complainant has trademark rights
Complainant claims rights in the HESS mark based upon multiple registration of the HESS Mark with the USPTO (e.g., Reg. No. 832,393, registered July 25, 1967). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel finds that Complainant’s registration of the HESS Mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <hessoil.org> domain name is confusingly similar to the HESS mark, as the name incorporates the mark in its entirety, along with the generic term “oil” and a “.org” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANAB, WIPO Case No. D2018-1138 (panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and disputed domain name <marlboro-company.business>).
For the disputed domain name to be found identical or confusingly similar to the HESS Mark, the relevant comparison is with the second-level portion “hessoil” of the disputed domain name, <hessoil.org> as it is well established that the gTLD “.org” may generally be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 1.11 (“WIPO Overview 3.0”), (Top-Level Domain as technical requirement for domain name registration is disregarded under the confusing similarity test).
Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (“The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.”).
Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”
One panelist noted in a recent decision citing section 1.7, “That straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue” Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”);
The disputed domain name here incorporates the entirety of Complainant’s HESS Mark and that reason is sufficient for this Panel to find the disputed domain name confusingly similar to Complainant’s HESS Mark
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
Under the Policy Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name to meet the requirements of Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <hessoil.org> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HESS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the disputed domain name as “S. Farag.” No information in the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds, therefore, under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <hessoil.org> domain name.
Complainant also contends Respondent’s lack of rights or legitimate interests in the <hessoil.org> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends Respondent uses a website accessed through the disputed domain name to advertise a purported oil business called “Hessoil Group,” but investigation has revealed the site contains false mailbox locations and inoperative email addresses. Complainant demonstrates through the evidence submitted in the Annexes to its Complaint that the alleged oil and gas company is a sham that masquerades as Complainant, providing a subterfuge for a phishing site to obtain users’ sensitive information.
Use of a disputed domain name to create a false affiliation with a complainant in furtherance of a phishing scheme denies a finding of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides it the Annexes attached to its Amended Complaint a screenshot of the disputed domain name’s resolving website which purports to advertise the “Hessoil Group,” an alleged oil and gas products and services company based in Italy, Libya, and the UAE. See Amend. Compl. Annex 5.
Complainant further argues that the disputed domain name’s resolving website solicits users to provide their full name, date of birth, address, and phone number under a “Careers” tab, which Complainant contends was unresponsive. Id. The Panel agrees with Complainant and finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has, therefore, satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Complainant contends that in light of the fame and renown of Complainant's HESS mark, it is inconceivable that Respondent could have registered the <hessoil.org> domain name without knowledge, both actual and constructive of Complainant's rights in the mark. Prior Panels have noted that arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). In this case, however, given that Complainant has used its HESS Mark for nearly 90 years and Respondent added the dictionary term representing Complainant’s oil business to Complainant’s registered HESS Mark, incorporated fully into the disputed domain name, this Panel has no trouble making the inference that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finding that such actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees and finds here that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the disputed domain name in bad faith.
Complainant also claims Respondent’s use of the <hessoil.org> domain name to masquerade as Complainant in order to conduct a phishing scheme demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to obtain users’ personal or sensitive information is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). The Panel has noted above Complainant’s Annex provides a screenshot of the disputed domain name’s resolving website which purports to advertise the “Hessoil Group,” an alleged oil and gas products and services company based in Italy, Libya, and the UAE. Amend. Compl. Annex 5. But as also noted under the second element of the Policy, Complainant shows that the disputed domain name’s resolving website solicits users to provide their full name, date of birth, address, and phone number under a “Careers” tab, which is unresponsive. Id. Under the circumstances presented, the Panel finds Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Considering all of the circumstances, therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hessoil.org> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: December 2, 2019
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