PetroSkills, LLC v. Domain Privacy
Claim Number: FA1201001424263
Complainant is PetroSkills, LLC (“Complainant”), represented by Mark G. Kachigian of Head, Johnson & Kachigian, P.C., Oklahoma, USA. Respondent is Domain Privacy (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petroskill.net>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 12, 2012; the National Arbitration Forum received payment January 12, 2012.
On January 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <petroskill.net> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@petroskill.net. Also on January 27, 2012, 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 February 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <petroskill.net>, is confusingly similar to Complainant’s PETROSKILLS mark.
2. Respondent has no rights to or legitimate interests in the <petroskill.net> domain name.
3. Respondent registered and used the <petroskill.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Petroskills, LLC, is involved in the business of oil and gas training, providing educational services and course materials in relation to various aspects of the petroleum industry. Complainant owns trademarks with the United States Patent and Trademark Office (“USPTO”) and the Norwegian Industrial Property Office (“NIPO”) the for its PETROSKILLS mark:
USPTO
Reg. No. 2,611,488 registered August 27, 2002;
Reg. No. 2,735,116 registered July 8, 2003; and
Reg. No. 3,136,894 registered August 29, 2006.
NIPO
Reg. No. 209,406 registered March 3, 1961.
Respondent, Domain Privacy, registered the <petroskill.net> domain name on April 6, 2009. Respondent’s domain name resolves to a website that offers services that are identical to those offered by Complainant’s business, including Complainant’s course materials and description to carry out those 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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 trademark registrations with both the USPTO and NIPO for its PETROSKILLS mark:
USPTO
Reg. No. 2,611,488 registered August 27, 2002;
Reg. No. 2,735,116 registered July 8, 2003; and
Reg. No. 3,136,894 registered August 29, 2006.
NIPO
Reg. No. 209,406 registered March 3, 1961.
The Panel finds that Complainant established rights in the PETROSKILLS mark under a Policy ¶ 4(a)(i) evaluation through its trademark registration with multiple trademark agencies. See 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)); see also 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). The Panel additionally finds that registration of a trademark in the country where Respondent resides or operates is not necessary for the purposes of Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); 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).
Complainant contends that the disputed domain name is confusingly similar to its PETROSKILLS mark. Complainant alleges that removing the letter “s” from its mark and adding the generic top-level domain (“gTLD”) “.net” does not distinguish the <petroskill.net> domain name from the PETROSKILLS mark. The Panel agrees; these two changes are insufficient to differentiate the domain name from the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Considering the evidence shown on record, the Panel finds that Respondent’s <petroskill.net> domain name is confusingly similar to Complainant’s PETROSKILLS mark under Policy ¶ 4(a)(i).
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <petroskill.net> domain name. Once Complainant makes a prima facie case to support its allegations under Policy ¶ 4(a)(ii), the burden of proof shifts to Respondent to prove that it does have such rights or legitimate interests. The Panel finds that Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to make an inference that Respondent does not have rights or legitimate interests in the <petroskill.net> domain name. However, the Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant maintains that Complainant did not license or permit Respondent to use its PETROSKILLS mark. Complainant further claims that Respondent is not commonly known by the <petroskill.net> domain name. The WHOIS information identifies “Domain Privacy” as the registrant of the disputed domain name. Respondent did not respond to this case, thereby failing to contradict any of Complainant’s allegations or the WHOIS information. Thus, the Panel finds that Respondent is not commonly known by the <petroskill.net> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 <petroskill.net> domain name resolves to a website that offers oil and gas education services identical to the services that Complainant offers. In fact, Respondent’s competing educational services use Complainant’s course materials. The Panel finds that Respondent’s use of the disputed domain name to offer competing services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the <petroskill.net> domain name under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also 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.”).
Complainant further argues that Respondent’s registration and use of the <petroskill.net> domain name is evidence of typosquatting. Respondent’s <petroskill.net> domain name contains a common misspelling of Complainant’s PETROSKILLS mark, only differing from the mark by the removal of the letter “s” and the addition of the gTLD. The Panel finds that Respondent purposefully chose this disputed domain name in order to take advantage of Internet users that misspelled Complainant’s mark in the domain name. For this reason, the Panel holds that Respondent has engaged in typosquatting. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the <petroskill.net> domain name under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant urges that Respondent’s registration and use of the <petroskill.net> domain name to offer identical and competing oil and gas education services disrupts Complainant’s business and constitutes bad faith registration and use. Complainant claims that Respondent uses unauthorized copies of Complainant’s course materials to provide Respondent’s competing educational services. The Panel agrees with Complainant that Respondent’s registration and use of the <petroskill.net> domain name disrupts Complainant’s business. Therefore, the Panel finds that Respondent registered and uses the <petroskill.net> domain name in 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 Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Complainant further alleges that Respondent uses the confusingly similar disputed domain name and Complainant’s course materials in an attempt to create confusion among Internet users as to Complainant’s affiliation with Respondent’s <petroskill.net> domain name, resolving website, and competing educational services. Complainant contends that Respondent takes commercial advantage of Complainant’s mark by diverting potential customers from Complainant to Respondent’s competing website. The Panel finds that Respondent is attempting to create confusion among Internet users and seeks to profit from that confusion. Consequently, the Panel holds that Respondent registered and uses the <petroskill.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).
As the Panel previously found above that Respondent has engaged in typosquatting, the Panel finds that Respondent’s typosquatting is also evidence of Respondent’s bad faith registration and use of the <petroskill.net> domain name under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the PETROSKILLS mark. Complainant argues that Respondent's offering of directly competing educational services and Respondent’s use of Complainant's own materials further indicate that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel finds that Respondents conduct in using Complainant’s own training materials permits the inference that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <petroskill.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 4, 2012.
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