national arbitration forum

 

DECISION

 

Saudi Arabian Oil Company v. Huloul Co.

Claim Number: FA1206001450578

 

PARTIES

Complainant is Saudi Arabian Oil Company (“Complainant”), represented by Kristen S. Ruisi of Abelman, Frayne & Schwab, New York, USA.  Respondent is Huloul Co. (“Respondent”), Saudi Arabia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>], registered with Dynadot, LLC.

 

PANEL

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.

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2012; the National Arbitration Forum received payment on June 26, 2012.

 

On June 26, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name.  Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 June 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@ارامكو-السعودية.com.  Also on June 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 July 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

1. Complainant has rights in the Arabic language equivalent of the SAUDI ARAMCO mark, which it uses in connection with operations in oil exploration, production, refining, petrochemicals, marketing, and international shipping;

2. Complainant has trademark registrations in numerous countries for the SAUDI ARAMCO (in Arabic) mark;

3. The English translation of the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is <saudiaramco.com>;

4. The <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is identical to Complainant’s mark;

5. Respondent has no rights or legitimate interests in the disputed domain name.

6. The disputed domain name has been registered and is being used in bad faith.

7. Respondent is not commonly known by the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name;

8. The <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name resolves to a website that features pay-per-click links to a variety of goods or services;

9. Respondent attempted to create an association between the disputed domain name and Complainant, and Respondent profits from the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name;

10. Respondent was aware of Complainant’s rights in the SAUDI ARAMCO (in Arabic) mark when registering the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name.

 

B. Respondent

The Respondent did not submit a Response.

 

Preliminary Issue:  Internationalized Domain Name

 

As the disputed domain name is an internationalized domain name, the Panel makes the following observations which will assist the reader in understanding the process of dealing with such domain names when they arise for consideration in complaints made under the Policy.

 

The domain name in dispute, <ارامكو-السعودية.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>.  An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters.  In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE.  For Complainant to display the <xn----ymcabk9akt8cvfni4bf5a.com> properly in the <ارامكو-السعودية.com> domain name, it first had to encode it into the <xn----ymcabk9akt8cvfni4bf5a.com> domain name.

 

In the past, panels have found IDNs and their PUNYCODE translations to be equivalent.  See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name).  This Panel finds that the <ارامكو-السعودية.com> domain name is the same as its PUNYCODE translation, <xn----ymcabk9akt8cvfni4bf5a.com>, for purposes of this proceeding.

 

FINDINGS

 

1.    Complainant is the state owned oil company of the Kingdom of Saudi Arabia

and the largest fully integrated global petroleum enterprise in the world.

 

2.    Complainant has rights in the Arabic language equivalent of the SAUDI

ARAMCO mark, which it uses in connection with operations in oil exploration, production, refining, petrochemicals, marketing, and international shipping. Complainant has trademark registrations in numerous countries for the SAUDI ARAMCO (in Arabic) mark including the SAUDI ARAMCO (in Arabic) mark (Reg. No. 1,300,536 registered December 22, 2005) with the Office of the Controller-General of Patents, Designs and Trademarks (“OC-GPDT”) in India and the SAUDI ARAMCO (in Arabic) mark (Reg. No. 36,410 registered March 10, 2003) with the United Arab Emirates’ Ministry of Economy, Trade Mark Section (“METMS”).

 

3. Respondent registered the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name on October 14, 2008.It resolves to a parking page associated with Pay-Per-Click advertising for an array of goods and services unconnected with Complainant.

 

 

DISCUSSION

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."

 

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.

 

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.”).

 

          Preliminary Issue: Internationalized Domain Name

         

          The <ارامكو-السعودية.com> domain name contains Arabic characters which create a PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>. For the purpose of the present proceeding, the <ارامكو-السعودية.com> domain name is equivalent to its PUNYCODE translation, <xn----ymcabk9akt8cvfni4bf5a.com>.

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the Arabic translation of the SAUDI ARAMCO mark. Complainant contends that this mark is used in connection with operations in oil exploration, production, refining, petrochemicals, marketing, and international shipping, and it has been registered with trademark authorities in multiple countries. These registrations include the SAUDI ARAMCO (in Arabic) mark (Reg. No. 1,300,536 registered December 22, 2005) with the Office of the Controller-General of Patents, Designs and Trademarks (“OC-GPDT”) in India and the SAUDI ARAMCO (in Arabic) mark (Reg. No. 36,410 registered March 10, 2003) with the United Arab Emirates’ Ministry of Economy, Trade Mark Section (“METMS”). Panels have found that registration of a mark with a trademark authority, regardless of the location of the parties, is sufficient evidence of having rights in the mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also 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). Therefore, the Panel finds that Complainant has rights in the SAUDI ARAMCO (in Arabic) mark pursuant to Policy ¶ 4(a) (i).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SAUDI ARAMCO (in Arabic) mark. Complainant argues that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is identical to the SAUDI ARAMCO (in Arabic) mark. Complainant notes that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is translated into English as <saudiaramco.com>. The Panel finds that the deletion of a space between words in a mark and the addition of the generic top-level domain (“gTLD”) “.com” are irrelevant to a Policy ¶ 4(a) (i) analysis. See 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”). Therefore, the Panel finds that Respondent’s <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is identical to the SAUDI ARAMCO (in Arabic) mark pursuant to Policy ¶ 4(a) (i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s SAUDI ARAMCO mark trademark and to use it in its domain name;

(b) Respondent has then decided to use the domain name to resolve to a parking page with links to pay-per-click advertising for an array of goods and services unrelated to Complainant;  

(c)  Respondent has engaged in these activities without the consent or approval

of Complainant;

(d) Complainant also contends that Respondent is not commonly known by the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name or SAUDI ARAMCO (in Arabic) mark. Complainant asserts that Respondent has not used Complainant’s mark as a trademark, company name, or business or trade name. Additionally, the Panel notes that the WHOIS record lists “Huloul Co.” as the domain name registrant. Panels have found that the WHOIS record for a disputed domain name and other pertinent information on the record indicate whether a respondent is commonly known by a disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel finds that Respondent is not commonly known by the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name pursuant to Policy ¶ 4(c) (ii).

 

(e)  Complainant also argues that Respondent lacks rights and legitimate

interests in the <ارامكو-السعودية.com> [PUNYCODE translation of <xn-ymcabk9akt8cvfni4bf5a.com>] domain name. Complainant argues and puts forth evidence demonstrating that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name resolves to a website that displays links to various goods and services unrelated to Complainant. The Panel  finds that the screenshots provided of the disputed domain name’s resolving website display these links under headings such as “2012 Online Colleges” and “Best Mortgage Rates.” The panels in Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), and Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003), have held that the display of unrelated links is not a use which is protected under Policy ¶¶ 4(c) (i) and 4(c) (iii). Therefore, the Panel finds that Respondent’s use of the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

All of these matters go to make out the prima facie case against Respondent.

As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant asserts that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name was registered and is being used in bad faith. Complainant alleges that Respondent has intentionally attempted to create confusion as to Respondent’s association with, sponsorship of, or endorsement by Complainant. Complainant contends that Respondent is commercially gaining from attracting Internet users to the disputed domain name. Complainant contends that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name resolves to a website that displays links to goods and services unrelated to Complainant. Screenshots of the resolving website, the Panel finds, show these links under headings such as “designer apparel” and “Top 10 Luxury cars.” Therefore, the Panel finds that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] is meant to take commercial advantage of Internet users’ mistakes and thus that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b) (iv)).

 

Secondly, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the SAUDI ARAMCO (in Arabic) mark prior to registration of the disputed domain name because of Complainant's famous and distinctive mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); 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").

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SAUDI ARAMCO (in Arabic) and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ارامكو-السعودية.com> [PUNYCODE translation of <xn----ymcabk9akt8cvfni4bf5a.com>] domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC,

 Panelist

Dated:  July 28, 2012

 

 

 

 

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