national arbitration forum

 

DECISION

 

ECOPETROL AMERICA INC. v. JOHNY ALFONSO ROMERO ROCHA

 

Claim Number: FA1206001450566

And

                                          Claim Number: FA1206001450580 

PARTIES

Complainant is Ecopetrol America Inc. (“Complainant”), represented by Brandon  Ress  of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is JOHNY ALFONSO ROMERO ROCHA (“Respondent”), Colombia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ecopetrolamerica.com>,  <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, and <ecopetrolamerica.biz>, registered with Godaddy.Com Inc. and <ecopetrol-america.co> registered with Central Comercializadora de Internet S.A.S.

 

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.

 

Calvin A. Hamilton as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted Complaints to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received payments on June 26, 2012.

 

On June 26, 2012, Godaddy.Com Inc. confirmed by e-mail to the National Arbitration Forum that the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, and <ecopetrolamerica.biz> domain names are registered with Godaddy.Com Inc. and that Respondent is the current registrant of the names.  Godaddy.Com Inc. has verified that Respondent is bound by the Godaddy.Com Inc. 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 30, 2011, MI.COM.CO confirmed by e-mail to the National Arbitration Forum that the <ecopetrol-america.co> domain name is registered with MI.COM.CO and that Respondent is the current registrant of the name. MI.COM.CO has verified that Respondent is bound by the MI.COM.CO 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 and on July 6, 2012 the Forum served the Complaints and all Annexes, including  Written Notices of the Complaint, setting a deadline of July 17, 2012 and July 26, 2012 respectively, by which Respondent could file  Responses to the Complaints, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ecopetrolamerica.com, postmaster@ecopetrolamerica.co, postmaster@ecopetrolamerica.net, postmaster@ecopetrolamerica.org, postmaster@ecopetrolamerica.info, postmaster@ecopetrolamerica.mobi, postmaster@ecopetrolamerica.biz, postmaster@ecopetrol-america.co and  also on June 27, 2012 and July 17, 2012 the Written Notices 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.  Written Notice for FA1206001450566 was served in Spanish, based on the Spanish language registration agreement.  Written Notice for FA1206001450580 was served in English as the registration agreement for that domain name was in English.

 

Timely Responses were received and determined to be complete on July 10, 2012 and July 6, 2012.

 

Complainant submitted Additional Submissions on July 17, 2012 and July 11, 2012 that are deemed to be in compliance with Supplemental Rule 7.

 

Respondent submitted Additional Submissions on July 11, 2012 and July 19, 2012 that are deemed to be in compliance with Supplemental Rule 7.

 

Respondent also submitted several correspondences during the course of the proceedings which were considered by the Panel.

 

On June 26, 2012, Complainant requests to have each dispute decided by a single-member Panel. Respondent did not oppose the Claimant’s requests, rather requested that the separate proceedings be consolidated pursuant to the applicable Rules.  Under the said Rules, a party may request that proceedings be consolidated provided the criteria outlined in the Rules are met. One such criterion is that a request for consolidation be decided by the Panelist appointed first in time. Calvin A. Hamilton was the first of the Panelist to be appointed by the National Arbitration Forum on July 18, 2012. The Administrated Panel ( the “Panel”) considered that the criteria for consolidation under the Rules were complete and pursuant to an Order dated July 24, 2012, ordered the consolidation of cases FA1206001450580 and FA1206001450566. The Panel further ordered that the award for the consolidated proceedings shall be issued in the English language, without prejudice to consideration given the documentation submitted in the Spanish language.

 

Having reviewed the communications records, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant alleges in its Complaints:

1.    Complainant uses the ECOPETROL mark in connection with oil and gas products and services.

2.    Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its ECOPETROL mark (e.g., Reg. No. 2,474,834 registered August 7, 2001).

3.    The <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names are confusingly similar to Complainants ECOPETROL mark.

4.    The disputed domain names currently resolve to websites featuring pay-per-click links advertising the products and services of unrelated third parties.

5.    Respondent is not commonly known by the ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz>  or <ecopetrol-america.co>  domain names.

6.    Respondent offered to sell the disputed domain names to Complainant for an amount far greater than Respondent’s out-of-pocket expenses in acquiring the domain names.

7.    Respondent registered the disputed domain names with actual knowledge of Complainant’s trademark rights in the ECOPETROL mark.

8.    Respondent has registered several domain names outside of this dispute which appear to infringe on existing trademark rights, two of which contain Complainant’s mark.

 

B. Respondent

    Respondent alleges in its Responses:

1.    The nation of Colombia is Complainant’s principal shareholder, and as a Colombian citizen, Respondent is entitled to propose and carry out projects for the benefit of Complainant.

2.    Respondent is a shareholder of Ecopetrol S.A., which owns the ECOPETROL mark.

3.    Respondent made “intellectual and creative contributions” to the legislative process which enabled publicly-funded capitalization of Ecopetrol S.A., eventually resulting in the creation of Ecopetrol America Inc. (Complainant).

4.    In a written communication dated December 12, 2011, the “Head of the Corporative Communication Unit of Ecopetrol” indicated that Complainant was not interested in acquiring the disputed domain names.

5.    Respondent’s previous registration of domain names incorporating the PEMEX, GUCCI, and RIO TINTO marks is outside the scope of this proceeding.

6.    Complainant waited six and a half months to file its Complaint after expressing interest in the domain names.

7.    The intervening six and a half months evidence Complainant’s implied consent to Respondent’s possession and use of the disputed domain names.

8.    Respondent registered the disputed domain names on October 27, 2011.

 

C. Additional Submissions

A.   Complainant alleges in its Additional Submission:

1.    Respondent’s financial interest in Complainant is minimal, as Respondent holds 500 of shares of Complainant’s stock, of which over 41,000,000,000 shares are outstanding.

2.    Even if Respondent’s ownership of stock in Complainant entitled Respondent to register the disputed domain names, Respondent could only register them on behalf of the company, not to resell them to Complainant.

3.    Complainant’s rejection of Respondent’s offer to sell the disputed domain names does not amount to Complainant’s actual or implied consent to Respondent’s possession and use of the disputed domain names.

4.    The doctrine of laches is not incorporated into the UDRP and is generally inapplicable to UDRP proceedings.

5.    Respondent’s registration of several domain names outside of this dispute which appear to infringe on existing trademark rights is in fact relevant to the immediate proceeding.

B.   Respondent alleges in its Additional Submissions

1.    Confirms its request to consolidate the Proceedings.

2.    Reiterates his involvement with the legislative process which led to the creation of Ecopetrol S.A. and Ecopetrol Inc.

 

FINDINGS and 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.

 

Identical and/or Confusingly Similar

 

Complainant claims rights in the ECOPETROL mark based on the prior use since the 1950s in Colombia and other countries, as well as the numerous trademark registrations by Ecopetrol S.A. with various federal trademark authorities. Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 2,474,834 registered August 7, 2001; Reg. No. 3786574 registered May 11, 2010; Reg. No. 4142678 registered May 15, 2012; Reg. No. 4146333 registered May 22, 2112). Additionally, that Ecopetrol S.A. owns a number of registrations for the ECOPETROL mark in Colombia, Ecuador, Argentina, Peru, Spain and the European Community.

 

Previous panels have agreed that registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

The Panel concludes that Complainant has established rights in the ECOPETROL mark under Policy ¶ 4(a)(i).

 

Complainant avers that it is a wholly owned subsidiary of Ecopetrol S.A. and that it has been using the ECOPETROL name and trademark since 2007 in connection with its operations in the US and thus has rights in the ECOPETROL trademark. The Panel notes that Claimant is wholly owned by Ecopetrol S.A.

 

The Panel finds that rights exist in the trademark ECOPETROL by virtue of the trademark registration. The Panel finds further that by virtue of the existing company relationship between the parent and the subsidiary, that those rights are deemed to extend to the Complainant for purposes of the Policy. Additionally, the Panel comes to the conclusion that Complainant has rights in the trademark pursuant to its use in operations in the US.

 

Complainant alleges that the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz> and <ecopetrol-america.co>    domain names are confusingly similar to Complainant’s ECOPETROL mark pursuant to Policy ¶ 4(a)(i). The Panel notes that each disputed domain name wholly includes Complainant’s ECOPETROL mark, adding only the common geographic term “america” and a generic top-level domain (“gTLD”), such as “.com” or a country-code top-level domain (“ccTLD”) “.co.” Complainant argues that these changes are insufficient to negate confusing similarity under Policy ¶ 4(a)(i).

 

The Panel agrees, and finds that each disputed domain name is confusingly similar to Complainant’s ECOPETROL mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”); see also Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”).

 

 

 Rights or Legitimate Interests

 

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.”).

 

Complainant contends that Respondent is not commonly known by any of the disputed domain names within the meaning of Policy ¶ 4(c)(ii). The WHOIS information on file identifies the domain name registrant as “JOHNY ALFONSO ROMERO ROCHA,” which the Panel finds to bear no resemblance to the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>,  <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names.

 

Accordingly, the Panel concludes that Respondent is not commonly known by any of the disputed domain names for the purposes of 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).

 

Complainant alleges that Respondent previously used the disputed domain names to resolve to similar websites which displayed photographs of oil barrels, imagery which is related to Complainant’s business.  The Panel takes note that Complainant’s Exhibit E shows such use, and the Panel notes that no active content appears on the resolving websites. 

 

The Panel finds that Respondent’s prior failure to make an active use of the disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant asserts that the disputed domain names are currently being used to operate websites featuring sponsored links to unrelated third-party sites, which are neither bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor noncommercial or fair uses under Policy ¶ 4(c)(iii). The Panel confirms that the disputed domain names revolve to websites featuring links to unrelated third-party sites. The Panel is mindful that nowhere is there an annotation that the domain names are held for the benefit of Ecopetrol S.A. or Ecopetrol Inc.

 

The Panel finds that Respondent’s use of the disputed domain names to resolve to parked websites featuring unrelated links demonstrates Respondent’s lack of rights or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and or 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

Complainant further alleges that Respondent registered the disputed domain names for the purpose of extracting payment in excess of its out-of-pocket costs from Complainant. Complainant claims that Respondent contacted Complainant, offering the disputed domain names, along with several other domains and social media accounts, for $200,000 USD. In its additional submission, Complainant alleges that Respondent’s offer was wholly unsolicited, and that Respondent has no affiliation with Complainant outside of owning 500 shares of Complainant stock, of which there are currently over 41,000,000,000 shares outstanding. Complainant contends that even if Respondent’s minimal interest in Complainant entitled him to register the disputed domain names, he could only do so on behalf of Complainant, and could not demand $200,000 for their transfer.

 

Respondent argues that the nation of Colombia is Complainant’s principal shareholder, and as a Colombian citizen, Respondent is entitled to propose and carry out projects for the benefit of Complainant, which holds itself out as “the company of the Colombians.” Ostensibly, these projects would include the unsolicited registration of the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names. Respondent also points out that he is a shareholder of Complainant, which owns the ECOPETROL mark.

 

Respondent also argues that in his role as a consultant for The Ministry of Mines and Energy of Colombia he made significant contributions to the development of Colombian Law 1118 of 2006, which provided Ecopetrol S.A. with substantial capitalization, allowing it to expand its international operations. Respondent asserts that this expansion resulted in the creation of the Ecopetrol America Inc. entity, Complainant in the instant case. Respondent provides evidence of his contributions in this respect, but concedes that these efforts have not been acknowledged, through any form of compensation or otherwise, by either The Ministry of Mines and Energy of Colombia or Complainant. Respondent posits that this is no fault of his own, because the Colombian Government only chose to recognize contributions made in “a lower level category,” ignoring his while as a “consultant at the highest level with a high workload.”

 

The Panel finds that Respondent’s primary motivation for the registration of the domain names at issue was for eventual resale to Complainant for substantially more than Respondent’s out-of-pocket costs.

 

The Panel is mindful that the scope of the present procedure is confined to disputes between a complainant with trademark rights and a respondent with no rights or interests in the domain names and does not include disputes on the merits between parties with competing rights in the said names. Such disputes are properly dealt with by a court and not by the expedited UDRP procedure.

 

The Panel is also mindful that Complainant has initiated these proceedings. This is significant because it reinforces Complainant’s interpretation of the Ecopetrol S.A.’s response to the offer to purchase the domain names in the December 12, 2011 correspondence between Ecopetrol S.A. and Respondent.

 

On this basis, the Panel finds that Respondent lacks rights or legitimate interests in each of the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>,  <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).

 

The Panel further finds that Respondent’s ownership interest in Complainant does not entitle Respondent to register domain names which are confusingly similar to Complainant’s mark. See Lauritz Knudsen A/S (Schneider Electric Danmark A/S) v. W Y SOH, FA 95083 (Nat. Arb. Forum October 26, 2007) (finding that the respondent had no rights or legitimate interests in respect of the domain name because he does not conduct business under the LAURITZ KNUDSEN mark, although he is a shareholder in companies that do).

 

Accordingly, the Panel determines that Respondent has no rights or legitimate interests in respect of the disputed domain names.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s offer to sell the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names to Complainant for an amount in excess of Respondent’s out-of-pocket expenses, $200,000 USD, illustrates bad faith under Policy ¶ 4(b)(i). In its additional submission, Complainant also notes Respondent’s concession that the disputed domain names were registered with the intent to resell them to Complainant, as part of Respondent’s “business proposal” to Complainant, arguing that this is further evidence of Respondent’s bad faith under Policy ¶ 4(b)(i).

 

Respondent contends that it registered and offered the disputed domain names for sale in good faith, given Respondent’s “intellectual and creative contributions” to the legislative process which enabled publicly-funded capitalization of Ecopetrol S.A., eventually resulting in the genesis of Ecopetrol America Inc.

 

Respondent alleges that in a written communication dated December 12, 2011, the “Head of the Corporative Communication Unit of Ecopetrol” indicated that Complainant was not interested in acquiring the disputed domain names, which Respondent construes as Complainant’s consent to Respondent’s possession and use of the disputed domain names.

 

The Panel notes that Complainant interprets this communication differently in its Additional Submission, asserting that Complainant was merely rejecting Respondent’s offering of the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>, <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names, along with several other domain names and social media accounts, in exchange for $200,000.

 

As stated earlier, the Panel accepts Complainant’s interpretation of the December 12, 2011 correspondence.

 

 The Panel agrees and holds that Respondent’s offer to sell the contested domain names for more than Respondent’s out-of-pocket expenses, together with their registration with intent to transfer, exhibit bad faith registration and use under Policy ¶ 4(b)(i). See Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the respondent demonstrated bad faith by registering the domain name with the intent to transfer it to the complainant for $3,000, an amount in excess of its out of pocket costs).

 

Complainant also alleges that Respondent has established a pattern of registering domain names incorporating registered trademarks, which demonstrates bad faith under Policy ¶ 4(b)(ii). Complainant also cites evidence indicating Respondent’s registration of domain names incorporating the PEMEX, GUCCI, and RIO TINTO marks.

 

Respondent refutes Complainant’s assertion that Respondent’s previous registration of domain names incorporating the PEMEX, GUCCI, and RIO TINTO marks can be used to establish a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).

 

Moreover, Respondent would like to use its “chivalry and diplomacy” to inform Complainant that Respondent’s explanation for its use of the GUCCI mark was accepted by the holder of the trademark.

 

The Panel acknowledges that Respondent’s registration of these domain names has not been contested, therefore Respondent has not been found to have registered the names in bad faith, negating their use in the establishment of a pattern of bad faith. The Panel notes, however, that Respondent has registered eight contested domain names in the instant case. The Panel takes account of Respondent’s chivalrous disposition, but also notes that Respondent has failed to provide any evidence of the trademark holder’s consent to such use.

 

The Panel concludes that Respondent’s registration of eight domain names that are confusingly similar to Complainant’s mark supports the inference that Respondent knew of Complainant’s mark upon registration of the <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>,  <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names, exhibiting a pattern of bad faith conduct under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).

 

Based on the aforementioned, the Panel arrives at the conclusion that the Respondent has registered the disputed domain names in bad faith.

 

Doctrine of Laches

 

Respondent asserts that Complainant expressed disinterest in acquiring the disputed domain names from Respondent on December 12, 2011 and waited until June 27, 2012 to file its Complaint in the instant case. Respondent argues that the intervening six and a half months evidence Complainant’s implied consent to Respondent’s possession and use of the disputed domain names.

 

Complainant argues that the doctrine of laches is not incorporated into the UDRP or generally applied in UDRP proceedings.

 

The Panel finds that the doctrine of laches does not apply as a defense in these proceedings.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.  Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark.  Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).

 

Respondent’s claims against the government of Colombia and/or Ecopetrol S.A., including claims against Ecopetrol Inc., belong in the appropriate court of law as they are beyond the scope of these proceedings.

 

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 <ecopetrolamerica.com>, <ecopetrolamerica.co>, <ecopetrolamerica.net>, <ecopetrolamerica.org>, <ecopetrolamerica.info>, <ecopetrolamerica.mobi>,  <ecopetrolamerica.biz> and <ecopetrol-america.co> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Calvin A. Hamilton, Panelist

Dated: August 1, 2012

 

 

 

 

 

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