Oceaneering International, Inc. v. LJD c/o Osmund Holm-Hansen
Claim Number: FA0802001154298
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.
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.
Complainant submitted a Complaint to the National Arbitration Forum
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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant submits that it owns several trademark registrations for
OCEANEERING in the
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
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.”
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
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,
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
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
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