Ecopetrol America Inc. v. JOHNY ALFONSO ROMERO ROCHA
Claim Number: FA1206001450584
Complainant is Ecopetrol America Inc. (“Complainant”), represented by Brandon M. Ress of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is JOHNY ALFONSO ROMERO ROCHA (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ecopetrolamerica.us>, registered with GoDaddy.com Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2012; the National Arbitration Forum received a hard copy on June 26, 2012.
On June 26, 2012, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <ecopetrolamerica.us> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name. 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 27, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on July 18, 2012.
Complainant submitted a timely Additional Submission on July 19, 2012 that was deemed compliant with Supplemental Rule 7.
Respondent submitted a timely Additional Submission on July 20, 2012 that was deemed compliant with Supplemental Rule 7.
On July 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable.
In the instant proceedings, there are two Complainants although only one of them is a named party. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The two Complainants have a parent-subsidiary relationship. Complainant Ecopetrol America Inc., the named Complainant, is a wholly owned subsidiary of Ecopetrol S.A., alleged to be the owner of the ECOPETROL trademark and name. Both entities contend they have used the mark in connection with their business in providing oil and gas products and services. The Panel finds that the parties have a sufficient nexus to submit the complaints as one entity with Ecopetrol America Inc. as the named party. See Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006).
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Ecopetrol America, Inc. contends it is wholly owned subsidiary of Ecopetrol S.A., owner of the ECOPETROL trademark and name. Both parties use the ECOPETROL mark in connection with businesses that provide oil and gas products and services. Complainant uses the mark in its United States operations. The parent entity registered the mark with the United States Patent and Trademark Office (“USPTO”) on August 7, 2001. Complainant contends that the disputed domain name <ecopetrolamerica.us> is confusingly similar to the ECOPETROL mark. Complainant also alleges that:
(1) The disputed domain name formerly resolved to an inactive website that showed images of oil barrels and currently resolves to a website featuring pay-per-click links that advertise products and services of unrelated third-parties.
(2) Respondent is not commonly known by the <ecopetrolamerica.us> domain name.
(3) Respondent offered to sell the disputed domain name to Complainant for $200,000, which is an amount far more than the Respondent’s out-of-pocket expenses in acquiring the domain name.
(4) Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
(5) Respondent registered several domain names outside of this dispute, including eight which contain the ECOPETROL mark, and the rest of which appear to infringe on existing trademark rights of other parties.
On those grounds, Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent contends that he is a Columbian citizen who owns stock in Ecopetrol S.A. He alleges that the Nation of Columbia is the largest shareholder in Ecopetrol S.A. and that as a shareholder and citizen of Columbia he is entitled to propose and carry out projects for the benefit of Complainant. He asserts that he made “intellectual and creative contributions” to the process which resulted in the publicly-funded capitalization of Ecopetrol S.A. and ultimately resulted in the creation of Ecopetrol America Inc. He also asserts that:
(1) On December 12, 2011 a representative of Ecopetrol S.A. indicated that Complainant was not interested in acquiring the disputed domain name.
(2) Complainant waited 6½ months before filing the Complaint after having expressed interest in the disputed domain name, and the delay constitutes implied consent to Respondent’s possession and use of the disputed domain name; and
(3) Respondent’s prior registration of domain names incorporating marks of third parties is outside the scope of this proceeding.
On those grounds, Respondent contends that Complainant cannot meet its burden to prove the elements necessary to obtain an order requiring the disputed domain name to be cancelled or transferred.
C. Additional Submissions
In its additional submission, Complainant contends that:
(1) Respondent’s financial interest in Ecopetrol S.A. is small and that even if the stock ownership entitled Respondent to register the domain name he could register it only on behalf of the company and not for the purpose of selling it to Complainant.
(2) Complainant did not give actual or implied consent to Respondent’s possession and use of the disputed domain name by rejecting Respondent’s offer to sell it to Complainant.
(3) The doctrine of laches is inapplicable.
(4) Respondent’s registration of additional domain names not involved in this case that appear to infringe existing trademark rights is relevant evidence in this case.
In his additional submission, Respondent contends that:
(1) The disputed domain name is not confusingly similar to Complainant’s mark within the meaning of the Forum policy because it is comprised merely of descriptive terms, “Eco” being an abbreviation for the word “ecological” and the word “petrol” meaning “gasoline.”
(2) Respondent’s contributions to Ecopetrol S.A. as a citizen and shareholder include his registration of the disputed domain name and justified his proposal to offer to sell it to the company for $200,000.
(3) He did not act in bad faith because he is not seeking illicit gains and on that basis is entitled to an apology for the allegations of bad faith.
(4) His registration of domain names <guccigroup.co> and <gucci.gg> resulted in his receiving a cease and desist letter from the Gucci company to which he replied and, because he received no further communication, the company must have been satisfied with his response.
(5) His linking the disputed domain to a site containing pornographic images is not relevant evidence on the issue of bad faith.
Complainant has established the facts alleged in its contentions. Respondent has not established the facts alleged in his contentions.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant’s registration of the ECOPETROL mark with the USPTO confers rights in the mark under Policy ¶4(a)(i) even though Respondent is a resident and citizen of Columbia. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006). Moreover, the <ecopetrolamerica.us> domain name is confusingly similar to Complainant’s ECOPETROL mark under the Policy. The disputed domain name contains the entirety of Complainant’s ECOPETROL mark adding only the common geographic term America and the top-level domain “.us.” In addition, the mark is sufficiently distinctive and is not merely descriptive. On that basis, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ECOPETROL mark under Policy ¶ 4(a)(i). See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000).
Because Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, Respondent had the burden to show he has rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Respondent failed in his burden. The record contains no evidence that Respondent is commonly known by the disputed domain name or operates a business or other organization under the name ECOPETROL or ECOPETROL AMERICA. The Panel concludes that Respondent is not commonly known by the <ecopetrolamerica.us> domain name within Policy ¶4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006). Moreover, the record shows that Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶4(c)(iv). The use of Complainant’s mark to attract internet users to his own website with links to unrelated websites for commercial gain is not a bona fide offering of goods or services nor is it a legitimate non-commercial or fair use of the disputed domain name. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003). The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
Contrary to Respondent’s assertion, Respondent’s offer to sell the domain name as part of a package of domain names and social media accounts to Complainant for $200,000 is evidence of bad faith under Policy ¶4(b)(i). Respondent’s relationship with Ecopetrol S.A. does not change the fact that Respondent registered the disputed domain name in order to sell it to Complainant for far more than he paid for it, which establishes his bad faith registration and use. See VARTEC TELECOM, INC. v. Olenbush, D2000-1092 (WIPO Sept. 28, 2000). The fact that he had knowledge of Complainant’s rights in the ECOPETROL mark when he registered the domain name is further evidence of his bad faith registration. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007). The Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Because Complainant has established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ecopetrolamerica.us> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick Panelist
Dated: August 7, 2012
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