National Fuel Gas Company v. Anonymize, Inc.
Claim Number: FA2102001933547
Complainant is National Fuel Gas Company (“Complainant”), represented by Bassam N. Ibrahim of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Anonymize, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jobsatnatfuel.com>, registered with Epik Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as the panelist in this proceeding.
Debrett G. Lyons as panelist (the “Panel”).
Complainant submitted a Complaint to the Forum electronically on February 25, 2021; the Forum received payment on February 25, 2021.
On February 25, 2021, Epik Inc. confirmed by e-mail to the Forum that the <jobsatnatfuel.com> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik Inc. 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 February 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2021 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@jobsatnatfuel.com. Also on February 26, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in NATIONAL FUEL and NAT FUEL and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent did not file a Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a utilities provider and the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 3,019,335, registered November 29, 2005, for the trademark NATIONAL FUEL;
2. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark; and
3. the disputed domain name was registered on February 26, 2020 and resolves to a parked webpage displaying employment links to advertisements and websites not affiliated with Complainant.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[i] Complainant provides evidence of its USPTO registration for the trademark NATIONAL FUEL and so the Panel finds that Complainant has rights in that trademark.
Complainant submits that the disputed domain name is confusingly similar to its NATIONAL FUEL trademark as it incorporates “a recognized abbreviation of the well-known and distinctive NATIONAL FUEL trademark”, together with the non-distinctive terms, “jobs” and “at”, and the gTLD, “.com”.
The Panel is in agreement that the generic words and the gTLD can be essentially excluded for the purposes of comparison of the terms.[ii] On the other hand, there is nothing in the Complaint itself to satisfy the Panel of the assertions that (i) the trademark NATIONAL FUEL is well-known,[iii] (ii) the trademark is distinctive, or (iii) that NAT FUEL is a recognized abbreviation of NATIONAL FUEL. Indeed, absent proof of (i), the Panel would find the words “national fuel” to be wholly non-distinctive. That said, the Panel need only consider whether Internet users would, regardless of reputation, readily perceive the expression, “nat fuel”, to be a truncation of “national fuel” and fairly obviously the answer to that is in the affirmative, especially given the syntax of the term, “jobsatnatfuel”.
The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy. Accordingly, Complainant has established the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The name of the domain name registrant, “Anonymize, Inc.”, does not provide any prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights of its own and Complainant states that it has not given Respondent permission to use the trademark for any purpose. The use of the domain name is to drive Internet traffic to a webpage as described earlier and the Panel accepts Complainant’s assertion to be true that Respondent benefits from that traffic by way of pay-per-click fees. Clearly, such use does not establish a right or a legitimate interest in the domain name under the Policy.[v]
The onus shifts to Respondent to rebut the prima facie case which the Panel finds the Complaint to have established. Absent a Response that prima facie case has not been rebutted and the Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired 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 or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) has direct application. The Panel accepts Complainant’s submission that the resolving website exists for commercial gain. The Panel has already found the compared terms to be confusingly similar. In terms of how the Policy has been applied, the Panel finds that Respondent intended to create the requisite confusion described by paragraph 4(b)(iv).
The Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final element of the Policy[vi].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <jobsatnatfuel.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: March 31, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007); Hot Topic, Inc. v. Xiao Liu, FA 2001001877504 (Forum Jan 30, 2020).
[iii] Aside from an assertion that Complainant and its predecessors in interest have used the NATIONAL FUEL mark for over 40 years.
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
[vi] See, for example, DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain name and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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