Saudi Arabian Oil Company v. Aramco Oil Company
Claim Number: FA1111001414023
Complainant is Saudi Arabian Oil Company (“Complainant”), represented by Kristen S. Ruisi of Abelman, Frayne & Schwab, New York, USA. Respondent is Aramco Oil Company (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aramco.us>, registered with Melbourne It Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2011; the Forum received a hard copy of the Complaint on November 3, 2011.
On November 3, 2011, Melbourne It Ltd confirmed by e-mail to the National Arbitration Forum that the <aramco.us> domain name is registered with Melbourne It Ltd and that Respondent is the current registrant of the name. Melbourne It Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 4, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 25, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <aramco.us> domain name is identical or confusingly similar to Complainant’s ARAMCO mark.
2. Respondent does not have any rights or legitimate interests in the <aramco.us> domain name.
3. Respondent registered or used the <aramco.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the state-owned oil company of the Kingdom of Saudi Arabia. Complainant uses its ARAMCO mark to market its products and services. Complainant owns trademark registrations with the Bahrain Directorate of Industrial Property (“BDIP”), Brazil’s National Institute of Industrial Property (“BNIIP”), China’s State Administration for Industry and Commerce (“SAIC”), Egypt’s Commercial Registry (“ECR”), Hong Kong’s Intellectual Property Department (“HKIPD”), India’s Office of the Controller-General of Patents, Designs and Trademarks (“IOCGPDT”), the Japan Patent Office (“JPO”), Jordan Industrial Property Protection Directorate (“JIPPD”), Korean Intellectual Property Office (“KIPO”), Intellectual Property Corporation of Malaysia (“IPCM”), Mexican Institute of Industrial Property (“MIIP”), Oman Intellectual Property Department (“OIPD”), Intellectual Property Office of Philippines (“IPOP”), Saudi Arabia’s Ministry of Commerce and Industry, Trade Mark Section (“SAMCITMS”), Thailand Department of Intellectual Property (“TDIP”), Turkish Patent Institute (“TPI”), and United Arab Emirates Ministry of Economy, Trade Mark Section (“UAEMETMS”):
Trademark Agency Reg. No. Reg. Date
BDIP 28,968 December 19, 2010
BNIIP 820,914,711 December 4, 2001
SAIC 4,512,468 September 7, 2008
ECR 918,540 August 25, 2008
HKIPD 300,280,647 September 6, 2004
IOCGPDT 893,323 December 21, 2009
JPO 4,317,645 September 24, 2009
JIPPD 84,163 November 8, 2006
KIPO 463,572 January 24, 2010
IPCM 6,014,644 March 23, 2009
MIIP 21,803 September 25, 2006
OIPD 26,781 July 9, 2005
IPOP 4-1999-009608 May 21, 2004
SAMCITMS 523/98 May 23, 2008
TDIP KOR107071 November 17, 2008
TPI 206,691 September 18, 2008
UAEMETMS 30,129 August 1, 2002
Respondent registered the <aramco.us> domain name on August 6, 2007. The disputed domain name formerly resolved to a website that was nearly identical to Complainant’s official website that Respondent used to attempt to pass itself off as Complainant. The disputed domain name currently does not resolve to an active website.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant provides evidence of its trademark registrations for the ARAMCO mark throughout the world:
Trademark Agency Reg. No. Reg. Date
BDIP 28,968 December 19, 2010
BNIIP 820,914,711 December 4, 2001
SAIC 4,512,468 September 7, 2008
ECR 918,540 August 25, 2008
HKIPD 300,280,647 September 6, 2004
IOCGPDT 893,323 December 21, 2009
JPO 4,317,645 September 24, 2009
JIPPD 84,163 November 8, 2006
KIPO 463,572 January 24, 2010
IPCM 6,014,644 March 23, 2009
MIIP 21,803 September 25, 2006
OIPD 26,781 July 9, 2005
IPOP 4-1999-009608 May 21, 2004
SAMCITMS 523/98 May 23, 2008
TDIP KOR107071 November 17, 2008
TPI 206,691 September 18, 2008
UAEMETMS 30,129 August 1, 2002
Therefore, the Panel concludes that Complainant has established rights in its ARAMCO mark pursuant to Policy ¶ 4(a)(i), even when the mark is not registered in Respondent’s country. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); 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 UDRP ¶ 4(a)(i)); 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).
Respondent’s <aramco.us> domain name contains Complainant’s ARAMCO mark and Respondent simply attaches the country-code top-level domain (“ccTLD”) “.us” to Complainant’s mark. As this is the only alteration to Complainant’s mark, the Panel concludes that Respondent’s <aramco.us> domain name is identical to Complainant’s ARAMCO mark under Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <aramco.us> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <aramco.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS information identifies “Aramco Oil Company” as the registrant of the <aramco.us> domain name, which would seem to indicate that Respondent is commonly known by the disputed domain name. However, Complainant contends that Respondent registered the business name “ARAMCO Oil Company LLC” in Delaware, USA in 2007 but then cancelled the company registration in 2010. Complainant argues that this cancellation evidences that Respondent is not commonly known by the disputed domain name. Moreover, Complainant claims that it did not license or consent to Respondent’s use of its mark in a domain name. As Respondent has not presented any evidence that it is commonly known by the disputed domain name, the Panel determines that Respondent is not commonly known by the <aramco.us> domain name pursuant to Policy ¶ 4(c)(iii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to [UDRP] ¶ 4(c)(ii).”).
Respondent formerly used the <aramco.us> domain name to host a website nearly identical to Complainant’s official website. Respondent used this website in an attempt to pass itself off as Complainant in order to obtain confidential information about Complainant and Complainant’s employees. The Panel finds that Respondent’s attempt to pass itself off as Complainant shows that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the <aramco.us> domain name under Policy ¶ 4(c)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also MO Media LLC v. Next Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
Currently, Respondent’s <aramco.us> domain name does not resolve to an active website. The Panel concludes that Respondent’s failure to make an active use of the disputed domain name evidences Respondent’s lack of rights and legitimate interests in the <aramco.us> domain name pursuant to Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either UDRP ¶ 4(c)(i) or UDRP ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent previously used the <aramco.us> domain name to pretend to be Complainant’s official website in order to obtain confidential information about Complainant and Complainant’s employees. Respondent likely did, or would have, commercially benefited from this scheme. The Panel finds that Respondent attempted to create confusion as to Complainant’s affiliation with the disputed domain name by registering the identical <aramco.us> domain name and hosting a website nearly identical to Complainant’s official website. The Panel further finds that Respondent’s attempt to commercially benefit from this confusion evidences Respondent’s bad faith registration and use of the <aramco.us> domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Moreover, the Panel determines that Respondent’s registration and use of the disputed domain name for the purpose of passing itself of as Complainant constitutes both bad faith registration and use by itself pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (“Complainant asserts . . . that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers . . . . The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to [UDRP] ¶ 4(a)(iii).”); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name).
Respondent currently fails to make an active use of the <aramco.us> domain name. Thus, the Panel holds that Respondent both registered and uses the <aramco.us> domain name in bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the UDRP).
The Panel finds Policy ¶ 4(a)(iii) is 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 <aramco.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 8, 2011
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