Petroliam Nasional Berhad v. Kim Harrison
Claim Number: FA0712001123094
Complainant is Petroliam Nasional Berhad (“Complainant”), represented by Perry
R. Clark, of Kirkland & Ellis LLP, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petronasoil.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On January 6, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <petronasoil.net> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 January 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 6, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <petronasoil.net> domain name is confusingly similar to Complainant’s PETRONAS mark.
2. Respondent does not have any rights or legitimate interests in the <petronasoil.net> domain name.
3. Respondent registered and used the <petronasoil.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Petroliam Nasional Berhad, Complainant, is a fully-integrated oil and gas corporation. Complainant has used and promoted the PETRONAS trademark worldwide in connection with its oil and gas operation services since 1994. Complainant has registered the PETRONAS trademark with several authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,969,707 issued July 19, 2005). Complainant owns and operates several websites containing the PETRONAS mark, including <petronas.com.my> since 1998, <petronas.com> since 1996, <petronasgas.com> since 2001, and both <petronas.net> and <petronaslubricants.com> since 2005.
Respondent registered the disputed domain name on November 12, 2007. Currently, the <petronasoil.net> domain name resolves to a webpage in which Respondent passes itself off as Complainant in an effort to “phish” for the personal information of visiting Internet users.
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. webnet-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.
Complainant has established rights in the PETRONAS mark. Complainant holds several trademark registrations, including one with the USPTO for the PETRONAS mark. The Panel finds Complainant’s registration with the USPTO sufficient for finding rights to the mark pursuant to Policy ¶ 4(a)(i). See H-D Michigan Inc. v. Hog Heaven Motorcycles, FA 659657 (Nat. Arb. Forum Apr. 26, 2006) (“Complainant has established rights in the HARLEY mark through registration with the USPTO.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s PETRONAS mark. Complainant contends that the disputed domain name, <petronasoil.net>, includes the entirety of Complainant’s mark, merely adding the generic term “oil,” which directly relates to Complainant’s business, and the generic top-level domain (“gTLD”) “.net.” The Panel finds these alterations to an otherwise unchanged mark to be minor and insufficient to distinguish the disputed domain name from Complainant’s mark in any meaningful way for the purposes of Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights to or legitimate interests in the disputed domain name. The Panel finds that Complainant has established a prima facie case in the matter at hand. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has failed to submit a response to the Complaint. Therefore, the Panel is entitled to presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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.”). Nonetheless, the Panel chooses to examine the record to determine if Respondent has any rights or legitimate interests in the <petronasoil.net> domain name pursuant to Policy ¶ 4(c).
The disputed domain name, <petronasoil.net>, currently resolves to a website with which Respondent passes itself off as Complainant in an effort to phish for the personal information of visiting Internet users. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent is not commonly known by the <petronasoil.net> domain name and is not authorized to use Complainant’s PETRONAS mark in any way. Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the <petronasoil.net> domain name. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in the disputed domain name in accordance with Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s use of the disputed
domain name, <petronasoil.net>,
displays Complainant’s marks and passes itself off as Complainant’s website in
an effort to defraud Internet users, phish for personal information and collect
money. The panel in Vivendi Universal
Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002), faced a set of
facts very similar to those in the matter at hand. In Vivendi,
the respondent’s disputed domain name resolved to a webpage which copied the
webpage of the complainant in that case for the purposes of acquiring the
personal information of visiting Internet users. That panel found that the Vivendi respondent’s use created a
likelihood of confusion for the purpose
“of illegitimate commercial gain via theft [which] not only runs afoul of
Policy ¶ 4(b)(iv), but violates Paragraph 2(c) of the
Respondent uses the <petronasoil.net> domain name to engage in a phishing scam, misdirecting Internet users seeking Complainant’s genuine website to Respondent’s website. By imitating Complainant’s genuine website, Respondent was deceiving Complainant’s Internet customers and manipulating them into divulging sensitive personal information. Thus, Respondent’s use of the <petronasoil.net> domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
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 <petronasoil.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 20, 2008
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