Regal Petroleum plc v. Digi Real Estate Foundation
Claim Number: FA0708001072285
Complainant is Regal Petroleum Plc (“Complainant”), represented by Richard
M. Ives, of Pinsent Masons, 3 Colmore Circus,
Birmingham B4 6BH. Respondent is Digi Real
Estate Foundation (“Respondent”), PO
Box 7-5324,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <regalpetroleum.com>, registered with Domainbank.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 4, 2007.
On August 31, 2007, Domainbank confirmed by e-mail to the National Arbitration Forum that the <regalpetroleum.com> domain name is registered with Domainbank and that Respondent is the current registrant of the name. Domainbank has verified that Respondent is bound by the Domainbank registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@regalpetroleum.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <regalpetroleum.com> domain name is identical to Complainant’s REGAL PETROLEUM mark.
2. Respondent does not have any rights or legitimate interests in the <regalpetroleum.com> domain name.
3. Respondent registered and used the <regalpetroleum.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Regal Petroleum plc, has been conducting its business internationally under the REGAL PETROLEUM mark since 1998 in connection with oil and gas exploration and production. Complainant became a publicly traded company in 2002, when it was admitted to the Alternative Investment Market of the London Stock Exchange. The <regalpetroleum.com> domain name was originally registered by Complainant on December 7, 2000. Complainant lost ownership of the domain name in 2006 due to an administrative error. Complainant’s main corporate website is now located at the <regalpetroleum.co.uk> domain name.
Respondent registered the <regalpetroleum.com> domain name shortly after Complainant lost ownership in 2006. The disputed domain resolves to a website featuring advertisements for “Sex Books” and related adult oriented products, along with links to third-parties that are labeled as “Alternative Energy Mold,” “Alternative Fuel,” and “Alternative Energy Source.”
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. web net-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Under Policy ¶ 4(a)(i), Complainant
need not register its mark with a governmental authority, so long as it can
establish continuous use and secondary meaning.
See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant's trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb.
Forum May 18, 2001) (“The Policy does not require that a trademark be
registered by a governmental authority for such rights to exist.”).
Complainant has been conducting its business internationally under the REGAL PETROLEUM mark since 1998 in connection with oil and gas exploration and production. Complainant became a publicly traded company in 2002, when it was admitted to the Alternative Investment Market of the London Stock Exchange and besides previously owning the disputed domain name, now maintains its corporate website under the <regalpetroleum.co.uk> domain name. The Panel finds that Complainant has established common-law rights in the REGAL PETROLEUM mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <regalpetroleum.com>
domain name is identical to Complainant’s mark but for the omission of the
space between “regal” and “petroleum” and the inclusion of the generic
top-level domain (“gTLD”) “.com.” It is
well established that the omission of a space and the inclusion of a gTLD are
irrelevant in a Policy ¶ 4(a)(i) analysis. As such, the Panel finds pursuant to Policy ¶
4(a)(i) that Respondent’s disputed domain name is
identical to Complaint’s mark. See
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. See
TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb.
Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant
must first establish a prima facie case. Complainant’s [initial burden]
is to provide proof of valid, subsisting rights in a mark that is similar or
identical to the domain name in question.”). The Panel finds that Complainant has
established a prima facie case and
accordingly the burden is shifted to Respondent to prove that it does have
rights of legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent.); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide “concrete evidence that
it has rights to or legitimate interests in the domain name at issue”).
Respondent has not submitted a response to the
Complaint. Therefore, the Panel presumes
that Respondent has no rights or legitimate interests in the <regalpetroleum.com> domain name but
will still consider all the available evidence in consideration of the factors
listed under Policy ¶ 4(c). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (“Respondent’s failure to respond means that Respondent has not presented
any circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever has been commonly known
by the disputed domain name. Moreover,
Respondent has not sought or been granted permission by Complainant to use the
REGAL PETROLEUM mark. As a result, the
Panel finds that Respondent is not commonly known by the <regalpetroleum.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
Respondent’s <regalpetroleum.com>
domain name contains Complainant’s entire mark and resolves to a website
advertising “sex books” and other adult oriented products. Further, the site displays links to
third-parties that are unrelated to Complainant. Also, Respondent acquired
ownership after Complainant originally registered the mark and lost ownership
only due to an administrative error.
Consequently, the Panel finds that Respondent’s use is not in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see also Am. Anti-Vivisection Soc’y v. “Infa
dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding
that the complainant’s prior registration of the same domain name is a factor
in considering the respondent’s rights or legitimate interests in the domain
name); see also U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that the respondent’s use of the complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated business
was not a bona fide offering of goods or services); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15,
2002) (holding that the use of a domain name that is confusingly similar to an
established mark to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The factors listed
under Policy ¶ 4(b) are not meant to be exclusive examples of bad faith. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
The <regalpetroleum.com> domain name was originally registered by Complainant on December 7, 2000. Complainant lost ownership of the domain name in 2006 due to an administrative error. Shortly thereafter, Respondent obtained ownership of the disputed domain name. The Panel thus presumes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (holding that the complainant’s prior registration and use of the disputed domain name and the respondent’s registration of the domain name immediately after the complainant failed to timely renew its registration “gives rise to an inference of registration in bad faith pursuant to Policy ¶ 4(a)(iii)”).
Moreover, the disputed domain name is identical to Complainant’s mark and contains advertisements and links to unrelated third-parties under the labels “Alternative Energy Mold,” “Alternative Fuel,” and “Alternative Energy Source.” These labels are similar in context to the Alternative Investment Market in which shares of Complainant’s stock are publicly traded and the type of business in which Complainant engages. The Panel finds that this demonstrates an appropriation of Complainant’s mark and is additional evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to advertisements constituted bad faith use of the domain name); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Lastly, the disputed domain name features advertisements for “Sex Books” and other related adult oriented material. The Panel finds this to be further evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to adult-oriented websites is evidence of bad faith).
The Panel concludes that Complainant has satisfied 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 <regalpetroleum.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 23, 2007
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