Oceaneering International, Inc. v. Novacek Martin / Novacek MartinClaim Number: FA1008001338665
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 <nbeoceaneering.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.
On August 6, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <nbeoceaneering.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 August 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@nbeoceaneering.com by e-mail. Also on August 9, 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 September 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <nbeoceaneering.com> domain name is confusingly similar to Complainant’s OCEANEERING mark.
2. Respondent does not have any rights or legitimate interests in the <nbeoceaneering.com> domain name.
3. Respondent registered and used the <nbeoceaneering.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oceaneering International, Inc., is a provider of engineered products and engineering services, particularly in the offshore oil and gas industry. Complainant owns multiple trademark registrations for its OCEANEERING mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 983,504 issued May 7, 1974).
Respondent, Novacek Martin / Novacek Martin, registered the disputed domain name on September 29, 2009. The disputed domain name resolves to a website that offers pay-per-click links to Complainant’s competitors.
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 rights in its OCEANEERING mark based on
its holding of multiple trademark registrations for the same with the USPTO (e.g., Reg. No. 983,504 issued May 7,
1974). The Panel finds that
Complainant’s registration of its OCEANEERING mark with a federal trademark
agency such as the USPTO is sufficient to establish Complainant’s rights in the
mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan,
FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark
is registered with the USPTO, [the] complainant has met the requirements of
Policy ¶ 4(a)(i).”).
The Panel also finds that it is irrelevant whether Complainant has
registered the mark in the jurisdiction where Respondent resides or
operates. See Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant asserts that Respondent’s <nbeoceaneering.com>
domain name is confusingly similar
to Complainant’s OCEANEERING mark.
Respondent’s disputed domain name incorporates the entirety of
Complainant’s mark and merely adds the letters “nbe” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that the addition of letters and a gTLD are not sufficient to distinguish a
disputed domain name from a mark. See Am. Online, Inc. v. Amigos On Line RJ, FA
115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com>
domain name was confusingly similar to the complainant’s AOL mark because “…the
addition of a string of indiscriminate letters to a famous mark in a second
level domain does not differentiate the domain name from the mark.”); see also Jerry Damson, Inc. v.
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate
interests in the disputed domain name.
Complainant must first make a prima
facie case in support of its allegations, then the burden shifts to
Respondent to prove it has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii). The Panel finds that based on the arguments
made in the Complainant, Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. However, the Panel will examine the record to
determine whether Respondent has established rights and legitimate interests
under Policy ¶ 4(c). See Towmaster, Inc. v. Hale, FA
973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v.
Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007)
(“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”).
Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the OCEANEERING mark in a domain name or any other manner. Additionally, the WHOIS information indicates the registrant of the disputed domain name is “Novacek Martin / Novacek Martin.” Based on the WHOIS information and Complainant’s assertions, the Panel finds that Respondent is not commonly known by the disputed 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 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).
Respondent’s <nbeoceaneering.com> domain name was registered on September 29, 2009. The disputed domain name resolves to a website featuring pay-per-click links to Complainant’s competitors in the underwater engineering industry. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to redirect Internet users who are seeking information on Complainant’s products and services to a website with links to Complainant’s competitors in the underwater engineering industry, which interferes with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent’s use of the disputed domain
name to collect click-through fees from the linked websites that resolve from
the disputed domain name by intentionally attracting Internet users who seek
Complainant’s products and services is evidence of bad faith pursuant to Policy
¶ 4(b)(iv). See AOL
LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that
the respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent
was commercially gaining from the likelihood of confusion between the
complainant’s AIM mark and the competing instant messaging products and
services advertised on the respondent’s website which resolved from the
disputed domain name); see also Asbury Auto. Group, Inc.
v.
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nbeoceaneering.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 16, 2010
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