Varco I/P, Inc. v. Mahammad Aloudat
Claim Number: FA1008001340163
Complainant is Varco I/P, Inc. (“Complainant”), represented by Jonathan
M. Pierce, of Conley Rose, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <texasoiltools.com>, registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2010.
On August 11, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <texasoiltools.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@texasoiltools.com by e-mail. Also on August 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 September 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <texasoiltools.com> domain name is identical to Complainant’s TEXAS OIL TOOLS mark.
2. Respondent does not have any rights or legitimate interests in the <texasoiltools.com> domain name.
3. Respondent registered and used the <texasoiltools.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Varco I/P, Inc., manufactures and sells many products, including blowout preventers and pressure controls for use in oil and gas drilling and production. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TEXAS OIL TOOLS mark (e.g., Reg. No. 2,197,546 registered October 20, 1998).
Respondent, Mahammad Aloudat, registered the <texasoiltools.com> domain name on April 3, 2009. The disputed domain name resolves to a website that promotes Respondent’s oilfield products and services.
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 claims rights in the TEXAS OIL TOOLS mark
through its registrations of the mark with the USPTO (e.g., Reg. No. 2,197,546 issued October 20, 1998). The Panel finds these trademark registrations
with the USPTO sufficiently prove Complainant’s rights in the TEXAS OIL TOOLS
mark pursuant to Policy ¶ 4(a)(i). See 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)).
Complainant alleges
Respondent’s <texasoiltools.com> domain name is identical to its TEXAS OIL TOOLS mark. Respondent fully incorporates Complainant’s
mark in the disputed domain name and then merely deletes the spaces between the
words in the mark. In addition,
Complainant contends the addition of the generic top-level domain (“gTLD”)
“.com” to Complainant’s mark does not negate a finding of confusingly
similar. The Panel agrees. See
Bond & Co. Jewelers, Inc. v.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). After Complainant makes this prima facie case, the burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names. The Panel may interpret Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent has failed to submit a Response, the Panel will analyze the record to determine if Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
The WHOIS information lists “Mahammad Aloudat” as the registrant of the disputed domain name, which the Panel finds is not similar to the <texasoiltools.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <texasoiltools.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts Respondent is the president and
registered agent of a company called Texas Oil Tools and Consulting Services,
Inc. Complainant claims Respondent uses
the disputed domain name to resolve to a website that promotes Respondent’s
oilfield products and services. Based on
the evidence in the record, the Panel finds Respondent is using the disputed
domain name to offer products that directly compete with Complainant’s
products. Consequently, the Panel finds
Respondent’s domain name does 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not constitute
a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Finally, Complainant alleges
Respondent has refused to transfer the <texasoiltools.com>
domain name to Complainant unless Complainant pays Respondent $100,000. The Panel finds Respondent’s offer to sell
the disputed domain name for an amount that far exceeds its out-of-pocket costs
provides additional evidence that Respondent lacks rights and legitimate
interests under Policy ¶ 4(a)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
respondent’s willingness to sell a contested domain name for more than its
out-of-pocket costs provided additional evidence that Respondent had no rights
or legitimate interests in the contested domain name); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat.
Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer
to sell the domain name registration for $100,000 as evidence that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s offer to sell the disputed domain name to Complainant for an amount that exceeds its out-of-pocket costs constitutes bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
The Panel also finds Respondent uses a domain name that is identical to Complainant’s mark in order to redirect Internet users to its competing website. The Panel finds this use disrupts Complainant’s business, which qualifies as bad faith under 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Finally, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. As previously discussed, Respondent’s <texasoiltools.com> domain name is identical to Complainant’s TEXAS OIL TOOLS mark. Furthermore, Respondent uses the disputed domain name to offer various products for sale. Based on the evidence in the record, the Panel finds Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <texasoiltools.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum