Key Energy Services, LLC v. Magnum Domains
Claim Number: FA1210001465675
Complainant is Key Energy Services, LLC (“Complainant”), represented by Matt Schneller of Bracewell & Giuliani LLP, Washington, USA. Respondent is Magnum Domains (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <keyenergy.co>, registered with GoDaddy.com, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2012; the National Arbitration Forum received payment on October 3, 2012.
On October 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <keyenergy.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@keyenergy.co. Also on October 8, 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 November 6, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant provides a wide range of gas, oil and energy services, including drilling, maintenance, treatment, hauling, leasing and consulting services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the KEY ENERGY mark (Reg. No. 2,823,181 registered March 16, 2004) and the KEY ENERGY SERVICES mark (Reg. No. 2,819,710 registered March 2, 2004).
3. Respondent registered the disputed domain name on July 20, 2010.
4. The disputed domain name is identical or confusingly similar to the KEY ENERGY mark.
5. The disputed domain name currently resolves to a website stating “Domain For Sale” and telling users to “inquire at MagnumDomains@gmail.com.”
6. Respondent is also the registrant of record for other domain names that include or are confusingly similar to third-party registered trademarks,
7. Respondent is not and has never been authorized to use Complainant’s mark.
8. The Respondent has no rights or legitimate interest in the disputed domain name.
9. Registering a domain name for the purpose of selling it does not generate any rights or legitimate interests and Respondent’s offer of the disputed domain name for sale is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.
10. Respondent is not commonly known by the disputed domain name as a name or nickname.
11. The disputed domain name was registered and has been used in bad faith. Respondent registered the disputed domain name with the intent to sell it.
12. Respondent also offered to sell the disputed domain name to Complainant.
13. Respondent’s registration of many domain names containing or confusingly similar to a third-party trademark is a pattern of conduct which indicates bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Texas corporation that provides a wide range of gas, oil and energy services, including drilling, maintenance, treatment, hauling, leasing and consulting services.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the KEY ENERGY mark (Reg. No. 2,823,181 registered March 16, 2004) and the KEY ENERGY SERVICES mark (Reg. No. 2,819,710 registered March 2, 2004).
3. Respondent registered the disputed domain name on July 20, 2010. It currently resolves to a website stating “Domain For Sale”, advising users to “inquire at MagnumDomains@gmail.com.”
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant alleges that it owns trademark registrations with the USPTO for the KEY ENERGY mark (Reg. No. 2,823,181 registered March 16, 2004) and the KEY ENERGY SERVICES mark (Reg. No. 2,819,710 registered March 2, 2004). The Panel finds that these USPTO trademark registrations are sufficient to prove that Complainant owns rights in the KEY ENERGY and KEY ENERGY SERVICES marks pursuant to 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).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KEY ENERGY mark. Complainant argues that Respondent’s <keyenergy.co> domain name is confusingly similar to Complainant’s KEY ENERGY mark. As previous panels have found that neither the elimination of spaces or the addition of a country-code top-level domain (“ccTLD”) has any effect on distinguishing a domain name from a mark, the Panel concludes that the disputed domain name is identical to Complainant’s KEY ENERGY mark according to Policy ¶ 4(a) (i). See El Dorado Furniture Corp. v. Chorens, FA 1352412 (Nat. Arb. Forum Nov. 29, 2010) (finding the <eldoradofurniture.co> domain name was identical to the EL DORADO FURNITURE mark despite the removal of the spaces and the addition of the ccTLD “.co”).
Complainant has thus made out the first of the three elements that it must establish.
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 KEY ENERGY trademark and to use it in its domain name;
(b) Respondent has offered to sell the domain name for a sum in excess of its documented out-of-pocket expenses directly related to the domain name;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent is not commonly known by the disputed domain name as a name or nickname. Complainant asserts that the WHOIS information connected with the disputed domain name identifies Respondent as “Magnum Domains” and makes no mention of the disputed domain name or Complainant’s mark. Based on these allegations, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests 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).
(e) Complainant also alleges that the disputed domain name resolves to a “for sale” website that offers the disputed domain name for sale. Complainant also asserts that Respondent offered to sell the disputed domain name to Complainant for $3,000 after Complainant notified Respondent of Complainant’s rights in the KEY ENERGY mark. Complainant contends that registering a domain name for the purpose of selling it does not generate any rights and legitimate interests in the disputed domain name. The Panel agrees with Complainant and determines that Respondent’s efforts to sell the disputed domain name do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
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.
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 Respondent has attempted to sell the disputed domain name both via the resolving website advertising the disputed domain name for sale and an oral offer for sale to Complainant for $3,000. Complainant contends that Respondent’s suggested price of $3,000 is well in excess of its registration costs and that, as a result, Respondent’s efforts to sell the disputed domain name—a domain name that derives its value from the goodwill of Complainant’s trademark—are evidence of bad faith registration and use. In accord with the findings of prior panels, the Panel concludes that Respondent’s attempts to sell the disputed domain name indicate bad faith registration and use according to Policy ¶ 4(b) (i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Secondly, Complainant also argues that Respondent has registered many other domain names that contain or are confusingly similar to third-party trademarks, including <eobay.com>, <wedgiespizza.com>, <e-diet.com>, etc. Complainant alleges that the domain name registrations indicate that Respondent has a pattern of registering domain names that infringe on third-party trademarks, which is evidence of bad faith registration and use according to Policy ¶ 4(b) (ii).The Panel finds on the totality of the evidence that Respondent engaged in the pattern of registering domain names alleged.
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 KEY ENERGY mark 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <keyenergy.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 7, 2012
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