Oceaneering International,
Inc. v. LJD c/o Osmund Holm-Hansen
Claim Number: FA0802001154298
PARTIES
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan
Okin Goldsmith, of Duane Morris LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <h2oceaneering.com>, registered with Dotster.
PANEL
The undersigned certifies that she has acted independently and
impartially and to the best of her knowledge has no known conflict in serving
as Panelist in this proceeding.
Linda M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On March 10, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 31, 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 postmaster@h2oceaneering.com by e-mail.
A timely Response was received and determined to be complete on
On
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that it owns several trademark registrations for
OCEANEERING in the
B. Respondent
Respondent argues that Complainant owns no valid trademark rights in
the term OCEANEERING because the term is a generic word relating to “people
working and exploring the oceans of the world.”
Respondent states that his legitimate interest in the domain name relates
to the fact that Respondent’s initials and his father’s initials are “OHH” and
that Respondent’s nickname is H2O.
Respondent also states that for several years he has intended to start
an “oceaneering consulting firm” with his father, who is a world renowned
Oceanographer”
Respondent contends that “h2” reflects the initials
of his last name Holm-Hansen and that the term “oceaneering” is a generic term
relating to the business in which Respondent intends to enter.
Respondent alleges that he did not act in bad faith and that he was not
even aware of Complainant at the time the domain name was registered. Although he acknowledges the fact that he
made a proposal to sell the domain name, Respondent argues that he made the
offer only after Complainant demanded that he transfer the domain name free of
charge.
C. Additional Submissions
On
On
FINDINGS
This Panel concludes that the term OCEANEERING is a valid enforceable
trademark, as evidenced by Complainant’s portfolio of trademark
registrations. Complainant’s name has
appeared in many media reports over the years.
The term “ocean engineering” appears in at least one dictionary, along
with the explanation that “ocean engineering” is “also called oceaneering.”
Respondent’s Response was printed on letterhead stationery for
“H2Oceaneering Ocean Sciences and Consulting.” The evidence regarding Respondent’s efforts to
establish a consulting firm include Respondent’s statements concerning his
intentions with information about his father/business partner, the business
stationery featuring “H2Oceaneering,” and the fact that the
<h2oceaneering.com> domain name was registered on
The parties exchanged correspondence regarding this matter, and engaged
in one telephone conversation. In
response to Complainant’s initial cease and desist letter, Respondent stated, “
‘h2oceaneering’ is noticeably and distinctly different from ‘oceaneering’.” There appears to be no evidence that
Respondent had actual knowledge of Complainant until after Complainant had
filed this Complaint. On the issue of
bad faith, there appears to be no clear evidence that the Respondent registered
the domain name “primarily for the
purposes of selling it to the Complainant.”
Respondent’s letter stated, “If [Complainant] requests that I change the
name of my company, my website, and all the other direct and indirect
implications such a change would entail, it follows that I must be compensated
accordingly. Therefore I am offering to
sell [Complainant] my web domain ‘h2oceaneering’, and change the name of my
company for…$18,750.00.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 owns several trademark
registrations around the world for OCEANEERING, including U.S. Reg. No. 983,504
issued
The difference
between Complainant’s trademark and the disputed domain name <h2oceaneering.com> is the addition of the “h2”
term. The “h2” term combines with the
“O” in “Oceaneering” to form the chemical abbreviation for water, H2O. The terms “h2” or “H2O” have no relation to
Complainant’s trademark or company name, and Complainant does not use the
combination “H2Oceaneering.”
This Panel concludes that
the “H2” or “H2O” addition may be sufficient to distinguish Respondent’s domain
name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135,
1147 (9th Cir. 2002) ("Similarity
of marks or lack thereof are context-specific concepts. In the Internet
context, consumers are aware that domain names for different Web sites are
quite often similar, because of the need for language economy, and that very
small differences matter."); see
also Amazon.com, Inc. v. Integration
Unlimited, Inc., FA 183725 (Nat. Arb. Forum
Respondent contends it registered the <h2oceaneering.com> domain name for use in connection with an
“oceaneering” consulting firm. Respondent,
Osmond Holm-Hansen
Moreover, Respondent
contends that the <h2oceaneering.com> domain name is a
combination of his nickname and a generic term.
Respondent contends that “h2” reflects the initials of his last name Holm-Hansen
and that the term “oceaneering” is a generic term relating to the business in
which Respondent intends to enter. As
Respondent noted, the term “oceaneering” is synonymous with “ocean
engineering,” according to Dictionary.com.
This Panel concludes that Respondent has established rights or
legitimate interests in the <h2oceaneering.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Energy Source Inc. v. Your
Energy Source, FA 96364 (Nat. Arb. Forum
The Panel concludes
that Respondent has submitted evidence sufficient to establish rights and
legitimate interests pursuant to Policy ¶ 4(a)(ii). See SFX
Entm’t, Inc. v. Cushway, D2000-0356 (WIPO
In view of the Panel’s conclusion above that
the Respondent has a legitimate interest in the disputed domain name, the Panel
declines to analyze the bad faith element of the Policy. See
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum
DECISION
In view of the Panel’s determination that all three elements required
under the ICANN Policy have not been established, the Panel concludes that
relief shall be DENIED.
Linda M. Byrne, Panelist
Dated:
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