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DECISION

 

BP p.l.c. v. Whois-Privacy.Net Ltd c/o DN Manager

Claim Number: FA0911001292649

 

PARTIES

Complainant is BP p.l.c. (“Complainant”), represented by Daniel Greenberg, of Lexsynergy Limited, United Kingdom.  Respondent is Whois-Privacy.Net Ltd c/o DN Manager (“Respondent”), Vanuatu.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bpgasstation.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 5, 2009.

 

On November 3, 2009, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <bpgasstation.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 November 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 26, 2009 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@bpgasstation.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 4, 2009, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <bpgasstation.com> domain name is confusingly similar to Complainant’s BP mark.

 

2.      Respondent does not have any rights or legitimate interests in the <bpgasstation.com> domain name.

 

3.      Respondent registered and used the <bpgasstation.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, BP p.l.c., is a global energy company that specializes in the manufacture and supply of fuel, oil, gas, and other related products.  Complainant was formed in April, 1909.  Complainant has offered its products and services under its BP mark.  Complainant has registered its BP mark in over ninety countries. Specifically, Complainant holds multiple trademark registrations with the United Kingdom Intellectual Property Office (“UKIPO”) for its BP mark (e.g. Reg. No. 848911 issued May 9, 1963).

 

Respondent registered the <bpgasstation.com> domain name on October 8, 2005.  The disputed domain name resolves to a parked website containing a commercial search engine and third-party hyperlinks unrelated to Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has registered the BP mark with the UKIPO (e.g. Reg. No. 848911 issued May 9, 1963).  Respondent operates in Vanuatu, but the Panel finds that the Policy does not require the mark to be registered in the country the respondent operates.  Therefore, the Panel finds that Complainant has established rights in the BP mark pursuant to Policy ¶ 4(a)(i) through Complainant’s UKIPO registrations of the mark.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant claims Respondent’s <bpgasstation.com> domain name is confusingly similar to Complainant’s BP mark.  The disputed domain name combines Complainant’s BP mark with two descriptive terms “gas” and “station,” which relate to Complainant’s fuel and gas business.  The Panel finds the addition of two descriptive terms fails to adequately distinguish the disputed domain name from Complainant’s mark.  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 Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity  with regard to Policy ¶ 4(a)(i).”).  Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Therefore, the Panel finds Respondent’s <bpgasstation.com> domain name is confusingly similar to Complainant’s BP mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainants have satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent does not have any rights or legitimate interests in the <bpgasstation.com> domain name.  The burden shifts to the respondent to prove it does have rights or legitimate interests when a complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).

 

Complainant emphasizes that Respondent is not authorized to use the BP mark.  Respondent failed to offer evidence showing Respondent is commonly known by the <bpgasstation.com> domain name.  Complainant provides the WHOIS information for the record which lists the disputed domain name registrant as “Whois-Privacy.Net Ltd c/o DN Manager.”  There is no evidence on the record showing Respondent is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent has not established it is commonly known by the <bpgasstation.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent’s <bpgasstation.com> domain name resolves to a website containing a commercial search engine and hyperlinks relating to third-parties.  Respondent likely receives click-through fees.  The Panel finds Respondent’s use of the confusingly similar disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Therefore, the Panel concludes Panel ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent uses the <bpgasstation.com> domain name to resolve to a parked website containing commercial search engine and third-party hyperlinks which are unrelated to Complainant.  The Panel infers, and Complainant argues, that Respondent receives click-through fees from the hyperlinks and search engine.  Internet users, interested in Complainant and Complainant’s fuel, oil, gas, and other related products, may become confused as to Complainant’s affiliation and sponsorship of the disputed domain name and resolving website.  Respondent attempts to profit from this confusion.  Therefore, the Panel finds Respondent’s use of the <bpgasstation.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bpgasstation.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 18, 2009

 

 

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