Oceaneering International, Inc. v. None a/k/a olateju jide
Claim Number: FA1007001333874
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 <oceaneeringdrilling.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 08, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <oceaneeringdrilling.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 July 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oceaneeringdrilling.com. Also on July 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of a Written Notice, as defined in Rule 1. 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 <oceaneeringdrilling.com> domain name is confusingly similar to Complainant’s OCEANEERING mark.
2. Respondent does not have any rights or legitimate interests in the <oceaneeringdrilling.com> domain name.
3. Respondent registered and used the <oceaneeringdrilling.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oceaneering International, Inc., provides engineereing products and services, particularly in the offshore oil and gas industry as well as serving defense, aerospace and entertainment industries. Complainant owns the OCEANEERING mark through its various federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 983,504, May 7, 1974) and the Nigeria Federal Ministry of Commerce & Industry (e.g. Reg. No. 71,834, February 15, 2008) and uses it in connection with mobile offshore production systems, subsea intervention, oil and gas drilling expeditions as well as repair and recovery operations. Complainant offers information about its goods and services related to its mark at its official website resolving from the <oceaneering.com> domain name.
Respondent, None a/k/a olateju jide, registered the <oceaneeringdrilling.com> domain name on January 15, 2010. The disputed domain name resolves to a website that provides information for what appears to be a competitor of Complainant.
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 asserts its rights in the OCEANEERING mark through its numerous registrations of the mark worldwide, including with the USPTO (e.g. Reg. No. 983,504, May 7, 1974) and the Nigeria Federal Ministry of Commerce & Industry (e.g. Reg. No. 71,834, February 15, 2008). The Panel finds Complainant’s federal trademark registrations both in Complainant’s country of business and in Respondent’s listed country of business sufficiently establish Complainant’s rights in the OCEANEERING mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <oceaneeringdrilling.com> domain name
is confusingly similar to Complainant’s OCEANEERING mark. Complainant contends the disputed domain name
merely adds a descriptive term related to Complainant’s business under the mark
and adds the generic top-level domain (“gTLD”) (“.com”). See Arthur
Guinness Son & Co. (
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).
Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, thus shifting the burden to the Respondent to provide evidence to the contrary, pursuant to Policy ¶ 4(a)(ii). The Panel chooses to view the lack of a response to these proceedings by Respondent as an admission of its lack of rights or legitimate interests in the disputed domain name. However, the Panel chooses to review the evidence before it in determining Complainant’s allegations, pursuant to 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant asserts that it did not grant any authorization
in the OCEANEERING mark to Respondent. Complainant
contends that Respondent is not commonly known by the disputed domain
name. The WHOIS information lists the
registrant of the disputed domain name as “None
a/k/a olateju jide,” which, Complainant argues, does not support a contention
that Respondent is commonly known by the disputed domain name. The Panel finds, because Respondent is
not commonly known by the disputed domain name and Complainant gave no
authorization of its OCEANEERING mark to Respondent, Respondent lacks rights and legitimate interest in the <oceaneeringdrilling.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney,
FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also
Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of
Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information
reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not
‘commonly known by’ any of the disputed domain names prior to their
registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.”).
Complainant provides the Panel a screenshot of the website resolving from Respondent’s <oceaneeringdrilling.com> domain name. The website appears to the Panel to describe a company that competes with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users seeking Complainant’s oil and gas drilling products and services to its own competing site, and Respondent’s likely profiting from the redirection, is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) of the <oceaneeringdrilling.com> domain name. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant asserts that the disputed domain name disrupts Complainant’s business by resolving to Respondent’s competing site. The Panel infers that Respondent profits from diverting Complainant’s oil and gas drilling business to its own website. The Panel finds that Respondent’s <oceaneeringdrilling.com> domain name creates a disruption of Complainant’s business which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
The Panel previously determined that Respondent’s <oceaneeringdrilling.com> domain name
is confusingly similar to Complainant’s OCEANEERING mark. Further, the Panel
determined that the website resolving from the disputed domain name relates to
a business in competition with Complainant in the oil and gas drilling
business. The Panel infers that Respondent uses the confusingly similar
disputed domain name to create a likelihood of confusion for Internet users
seeking Complainant’s goods and services, and then to profit from this
confusion. The Panel finds that such use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent
violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website
and offering identical services as those offered by the complainant); see also Identigene,
Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Complainant has satisfied the elements of 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 <oceaneeringdrilling.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 25, 2010
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