National Oilwell Varco, L.P. / Varco I/P, Inc. v. Above.com Domain Privacy
Claim Number: FA1201001426188
Complainant is National Oilwell Varco, L.P. / Varco I/P, Inc. (“Complainant”), represented by Jonathan M. Pierce of Porter Hedges LLP, Texas, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationaloilwellvarco.com>, registered with ABOVE.COM PTY 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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2012; the National Arbitration Forum received payment on January 25, 2012.
On January 24, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <nationaloilwellvarco.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@nationaloilwellvarco.com. Also on February 1, 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 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (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 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 <nationaloilwellvarco.com> domain name is identical to Complainant’s NATIONAL OILWELL VARCO mark.
2. Respondent does not have any rights or legitimate interests in the <nationaloilwellvarco.com> domain name.
3. Respondent registered and used the <nationaloilwellvarco.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Oilwell Varco, L.P. / Varco I/P, Inc., owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the NATIONAL OILWELL VARCO mark (e.g., Reg. No. 3,796,169 filed January 15, 2008 registered June 1, 2010), as well as the NATIONAL OILWELL mark (e.g., Reg. No. 1,745, 532 registered January 12, 1993). Complainant provides major mechanical components for land-based and offshore drilling rigs along with other oil drilling products and equipment.
Respondent, Above.com Domain Privacy, registered the disputed domain name on May 24, 2009. The disputed domain name resolves to a website offering links to employment and job search services for the gas and oil industry.
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 that it has established its rights in the NATIONAL OILWELL VARCO mark by registering it with the USPTO (e.g., Reg. No. 3,796,169 filed January 15, 2008 registered June 1, 2010). Complainant has provided the trademark certificate for the mark, verifying that its owns the registration and that the registration was filed prior to Respondent’s registration of the disputed domain name. The Panel determines that Complainant has established its rights in the NATIONAL OILWELL VARCO mark under Policy ¶ 4(a)(i) dating back to January 15, 2008 by filing and registering it with the USPTO. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Further, prior panels have determined that a complainant need not present trademark information for the country in which a respondent operates in order to establish rights under Policy ¶ 4(a)(i). See 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). The Panel here notes that Respondent’s identified location is Australia, and that while Complainant claims to own a trademark registration in that jurisdiction, it has failed to present the Panel with the certificate indicating such a registration. However, as noted above, the Panel finds that Complainant’s USPTO trademark registrations are sufficient for it to establish rights in its mark under Policy ¶ 4(a)(i).
Complainant also claims that Respondent’s disputed domain name is identical to its NATIONAL OILWELL VARCO mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and removing the spaces between terms. The Panel finds that those two changes do nothing to distinguish Respondent’s <nationaloilwellvarco.com> domain name from Complainant’s NATIONAL OILWELL VARCO mark making the two identical under Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has successfully shifted the burden of proof under this provision to Respondent by making what the Panel finds is a prima facie case against Respondent indicating that it lacks rights or legitimate interests in the disputed domain name. See 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.”). Respondent has failed to file a response in this matter, which allows the Panel to presume that it lacks rights or legitimate interests in the disputed domain name unless the evidence on record clearly contradicts such a presumption. See 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). Therefore, the Panel will perform a thorough examination of the evidence presented to ascertain whether Respondent retains rights or legitimate interests in the disputed domain name based upon the factors included in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Above.com Domain Privacy.” With no other germane evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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 also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant claims that the disputed domain name resolves to a website that offers links to its competitors in the oil and gas industry. However, the screenshot submitted appears to list links to jobs and other employment services associated with the industry. Although Complainant bases its assertion on the precept that the links are competing, the Panel finds otherwise. Nonetheless, the Panel determines that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii) because it is offering links to services unrelated to Complainant. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Although Complainant contends that Respondent’s disputed domain name disrupts its business, the Panel disagrees. The evidence does not support such a contention because the links offered at the website offered through the disputed domain name are for unrelated services offered by third-party companies, not for oil and gas services. The links appear to resolve to websites and companies offering employment job-related services, albeit in the oil and gas industry. Therefore, the Panel concludes that Respondent’ disputed domain name does not disrupt Complainant’s business and therefore does not meet the requirements of Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
Complainant also contends that Respondent registered and is using the disputed domain name for its own commercial gain constituting bad faith. Complainant bases this contention on the erroneous belief that the website to which the disputed domain name resolves offers competing links. It’s unnecessary to demonstrate a competing relationship under this provision because the links may still generate revenue for Respondent based upon click-through fees for each Internet user diverted through the links notwithstanding the nature of the links offered. The Panel does find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it is attempting to gain commercially by confusing Internet users as to the affiliation that Complainant may have to the services offered from its website. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nationaloilwellvarco.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: March 1, 2012
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