Oceaneering International, Inc. v. Agents Office / Management
Claim Number: FA1112001421242
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Okin Goldsmith of SorinRoyerCooper LLC, New Jersey, USA. Respondent is Agents Office / Management (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oceaneeringgroup.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2011; the National Arbitration Forum received payment on December 22, 2011.
On December 24, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <oceaneeringgroup.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2012 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@oceaneeringgroup.com. Also on December 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <oceaneeringgroup.com> domain name is confusingly similar to Complainant’s OCEANEERING mark.
2. Respondent does not have any rights or legitimate interests in the <oceaneeringgroup.com> domain name.
3. Respondent registered and used the <oceaneeringgroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Oceaneering International, Inc., provides engineered products and engineering services particularly in the offshore oil and gas industry, including mobile offshore production systems, built-to-order specialty subsea tooling hardware, subsea intervention and installation services, and manned saltwater diving expeditions. Complainant owns multiple trademark registrations for the OCEANEERING mark with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 983,504 registered May 7, 1974;
Reg. No. 1,178,644 registered November 17, 1981;
Reg. No. 3,329,442 registered November 6, 2007;
Reg. No. 3,329,443 registered November 6, 2007; &
Reg. No. 3,389,015 registered February 26, 2008.
Respondent, Agents Office / Management, registered the <oceaneeringgroup.com> domain name on October 18, 2011. The disputed domain name is used for correspondence and the delivery of job applications and job offers as part of a phishing scheme intending to extract personal and confidential information from Internet users.
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 owns multiple trademark registrations for the OCEANEERING mark with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 983,504 registered May 7, 1974;
Reg. No. 1,178,644 registered November 17, 1981;
Reg. No. 3,329,442 registered November 6, 2007; &
Reg. No. 3,329,443 registered November 6, 2007;
Reg. No. 3,389,015 registered February 26, 2008.
The Panel finds that these multiple USPTO trademark registrations prove that Complainant has rights in the OCEANEERING mark, regardless of Respondent’s location, according to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <oceaneeringgroup.com> domain name is confusingly similar to Complainant’s OCEANEERING mark because the disputed domain name is comprised of only the OCEANEERING mark, the generic term “group,” and the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that the addition of a generic term does not dispel confusing similarity according to Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar). Prior UDRP cases also establish that an attached gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests”); see also 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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in disputed domain name according to the Policy ¶ 4(c) factors.
Complainant argues that Respondent has no connection or affiliation with Complainant and has received no license or consent to use the OCEANEERING mark in any way. The WHOIS information for the <oceaneeringgroup.com> domain name identifies the registrant as “Agents Office / Management,” which does not reflect any association between Respondent and the disputed domain name. Accordingly, the Panel may conclude that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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 name, 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).
Complainant argues that Respondent uses the <oceaneeringgroup.com> domain name to correspond with job seekers and deliver job applications as part of a phishing scheme designed to collect the personal and confidential information of job seekers. The Panel finds that operating such a fraudulent phishing scheme under Complainant’s mark does not satisfy the Policy ¶ 4(c)(i) or ¶ 4(c)(iii) requirements for a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the <oceaneeringgroup.com> domain name takes advantage of the valuable goodwill of Complainant’s mark in order to deceive Internet users and job seekers into believing that Respondent’s disputed domain name and the information distributed from it are affiliated with Complainant. Complainant contends that it has received inquiries from job seekers relating to job postings and applications sent out in connection with the disputed domain name, showing that Internet users are confused. Complainant argues that Respondent uses the disputed domain to carry out a phishing scheme, which Respondent intends to generate profit by fraudulently collecting personal information. The Panel therefore determines that Respondent registered and uses the <oceaneeringgroup.com> domain name in order to attract job seekers and create a likelihood of confusion as to Complainant’s sponsorship of the disputed domain name for Respondent’s own commercial benefit, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant also contends that Respondent uses the <oceaneeringgroup.com> domain name to send out e-mails as part of a plan for recruitment fraud. Complainant alleges that Respondent sends Internet users job applications from the disputed domain name and that these applications are intended to collect personal and confidential information from job seekers. The Panel finds that these activities constitute phishing and indicate that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights at the time it registered the <oceaneeringgroup.com> domain name by virtue of its numerous trademark registrations with the USPTO dating back to 1974. The Panel here finds that any arguments of bad faith based on constructive knowledge are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). The Panel does find, however, that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 100079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel determines that Complainant has satisfied 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 <oceaneeringgroup.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 25, 2012
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