PetroSkills, LLC v. Domain Privacy Service
Claim Number: FA1302001484744
Complainant is PetroSkills, LLC (“Complainant”), represented by Mark G. Kachigian of Head, Johnson & Kachigian, P.C., Oklahoma, USA. Respondent is Domain Privacy Service (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petroskillventures.com>, registered with FastDomain Inc..
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2013; the National Arbitration Forum received payment on February 12, 2013.
On February 12, 2013, FastDomain Inc. confirmed by e-mail to the National Arbitration Forum that the <petroskillventures.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain 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 February 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2013 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@petroskillventures.com. Also on February 15, 2013, 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.
A timely Response was received and determined to be complete on March 7, 2013.
On March 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an Oklahoma limited liability company having its principal place of business in Tulsa, Oklahoma, U.S.A. It owns numerous U.S. and European trademark registrations for the name PETROSKILLS for printed materials and software providing training in the fields of geology, geophysics, and other aspects of the petroleum industry, in Classes 9, 16 and 41. (e.g., Registration No. 2,611,488, registered August 27, 2002, first use in April 2000.)
Complainant has operated under the name PetroSkills, LLC since March 2000. It registered the domain name <petroskills.com> at that same time and since then has used it to facilitate its online business.
Complainant is the leader for oil and gas training, with more than 1,000 public and in-house sessions each year, more than 200 instructors, and 335,000 participants trained throughout the world. It conducted numerous training courses in India since at least March 2008.
Respondent’s domain name <petroskillventures.com> (the “Domain Name”) is virtually identical or confusingly similar to Complainant’s name. The only differences are deletion of the “s” at the end of “skills” and the addition of the word “ventures.” These changes are insufficient to distinguish the Domain Name from Complainant’s name for purposes of the Policy.
Respondent has no rights or legitimate interests in the Domain Name: Complainant has not authorized it to use its PetroSkills name, and Respondent’s use of the Domain Name to offer identical services within the same industry does not constitute a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i), or a legitimate noncommercial or fair use of it. Respondent is not commonly known by the Domain Name.
Respondent registered and is using the Domain Name in bad faith: It had actual knowledge of Complainant’s rights in its PetroSkills name when it registered the Domain Name. Respondent is using the Domain Name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s name as to the source, sponsorship, affiliation or endorsement of that website. Further, by offering services at that website that compete directly with those offered by Complainant, Respondent is engaging in a pattern of conduct that disrupts Complainant’s business. Respondent’s election to register the Domain Name using a privacy service is further evidence of bad faith.
Complainant notified Respondent of its objection to Respondent’s use of the name “PetroSkill” in a cease and desist letter dated November 30, 2011, at which time Respondent was using the domain name <petroskill.net.> When Respondent refused to cease using that name Complainant brought a UDRP case against Respondent, and the panel in that case ordered Respondent to transfer the name to Complainant. Respondent registered the Domain Name involved in the present case in March 2012 after losing <petroskill.net> to Complainant. At that time it had actual knowledge of Complainant’s rights and this is further evidence of bad faith registration and use.
B. Respondent
Respondent is a consultancy firm specializing in marine and offshore engineering and training services for the oil and gas industry. It does offer training services, but its main focus is on consultancy. It has sought trademark protection for its name PetroSkill Ventures in Class 42, whereas Complainant’s most similar trademark is in Class 41. Respondent’s services are thus distinct from those offered by Complainant and this negates or lessens any possibility of confusion among these parties.
Respondent’s name PetroSkill Ventures is similar to the word PETROSKILLS but not identical, especially when the difference in services is also considered.
Respondent has rights and legitimate interests in the Domain Name. It originally started its business by registering the domain name <petroskill.net> in April 2009 and incorporating under the name “PetroSkill Limited” in the British Virgin Islands in May 2009. Respondent incorporated its current corporate entity, “PetroSkill Ventures Private Limited,” in India on July 27, 2011 and from that point on conducted its business under that name. Certificates of incorporation and a purchase order dated July 29, 2011 from a customer reflecting Respondent’s PetroSkill Ventures name are submitted with the Response. Respondent is carrying on a bona fide business under that name and was doing so before it received the cease and desist letter dated November 30, 2011 from Complainant.
Respondent lost the prior UDRP case involving <petroskill.net> because it inadvertently failed to file a timely response in that case. Its pre-existing use of its own corporate name in that domain name was not known to the panel in that case.
Respondent has never intended to divert customers from Complainant. The difference in the types of services, consultancy vs. training, offered by the two firms should be evidence of this. Even with respect to the training aspect of Respondent’s business, the courses offered by the two firms are completely different. Respondent does not compete with Complainant. Further, the names of the two companies are different. There is no likelihood of confusion among them and therefore no evidence of bad faith intent by Respondent to divert Complainant’s customers to its website.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant owns rights to the PETROSKILLS marks by way of USPTO trade and service mark registrations dating from 2002. Since 2000 it has used that mark to provide training courses and training products related to petroleum engineering and production, as well as instructing customers on the principles of geology. See Reg. No. 2,611,488 registered on Aug. 27, 2002; Reg. No. 2,735,116 registered on July 8, 2003. (Complainant Exhibit C)
The Policy does not require that Complainant’s mark be protected in Respondent’s country. Its USPTO registration is sufficient to show Complainant’s rights in the mark under Policy ¶ 4(a)(i), even though Respondent is located in India. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (Stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The <petroskillventures.com> domain name is confusingly similar to the PETROSKILLS mark. It contains the entire PETROSKILLS mark with only two minor differences: the removal of the letter “s” from the end of the word “skills,” and the addition of the identifier “ventures.” Removing a single letter from Complainant’s mark does not constitute a significant difference, nor does adding the identifier “ventures.” See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Respondent’s domain name also features the generic top-level domain (“gTLD”) “.com” but this also is irrelevant. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Based upon the foregoing, the Panel concludes that the <petroskillventures.com> Domain Name is confusingly similar Complainant’s PETROSKILLS Mark under Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that Mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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 interest in the 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 asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated by several circumstances: Complainant has not authorized it to use its PetroSkills name, and Respondent’s use of the Domain Name to offer identical services within the same industry does not constitute a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶4(c)(iii). The evidence presented supports these allegations. Complainant further asserts that Respondent is not commonly known by the name PetroSkill, but the Panel does not rely upon this allegation as establishing a prima facie case of no rights or legitimate interests. Based upon the first two circumstances set forth above, however, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and it is incumbent upon Respondent to demonstrate that it does.
Respondent asserts that it has been doing business under some form of the name “PetroSkill” since 2009, when it registered its former domain name <petroskill.net> and incorporated under the name PetroSkill Limited in the British Virgin Islands. It incorporated its current business entity, PetroSkill Ventures Private Limited, in India in July 2011. The certificates of incorporation issued to Respondent for these entities corroborate this. See Respondent’s Ex. E. Respondent also furnished a copy of a purchase order for a stress analysis of pipe line of designated wells submitted by a customer to Petro Skill Ventures Pvt Ltd in July 2011 (Respondent Exhibit F) to demonstrate that it was doing business under that name at that time. Both parties furnished snapshots of Respondent’s website resolving from the Domain Name, which describe the Respondent’s business and identify PetroSkill Ventures Private Limited as the sponsor or author of that site. See Complainant’s Ex. B; Respondent’s Ex. A. Respondent further notes that it did not receive notice of any dispute from Claimant until Claimant’s cease and desist letter dated November 30, 2011 arrived, which was some 4 or 5 months after Respondent incorporated under its current name.
Based upon these facts, Respondent asserts that it has demonstrated its rights and legitimate interests in the Domain Name under Policy ¶¶4(c)(i) and 4(c)(ii). Policy ¶4(c)(i) permits a respondent to demonstrate rights or legitimate interests in a domain name if before any notice of the dispute it uses the domain name in connection with a bona fide offering of goods and services. It is generally understood, however, that it is not possible to show a bona fide offering of goods and services by using a domain name that is identical or confusingly similar to the mark of another to attract internet users to a website offering competing goods or services. In this case, Respondent registered the Domain Name in March 2012, just after it learned it had lost the domain name <petroskill.net> in a UDRP case filed against it by Complainant. It clearly had notice of the dispute at that time. By registering and using the new Domain Name for its business, which offered services that are identical or very similar to those offered by Complainant, it was trading off the name and goodwill of Complainant. The Panel finds and determines that there is no bona fide offering of goods or services within the meaning of Policy ¶4(c)(i) under these circumstances. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii);” Slep-Tone Entertainment Corporation d/b/a Sound Choice Accompaniment Tracks v. Sound Choice, FA0002000093631 (Nat. Arb. Forum April 10, 2000); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO April 22, 2000); Madonna Ciccione a/k/a Madonna v. Dan Parisi, et. al., D2000-0847 (WIPO October 12, 2000) (“use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods and services”).
Respondent’s claim that it has rights and legitimate interests in the Domain Name because it has been commonly known by the Domain Name within the meaning of Policy ¶4(c)(ii) presents a far more serious challenge. The evidence that Respondent has been using its PetroSkill corporate names in connection with its business since 2009 is clear and undisputed. On these facts a panel might well conclude that Respondent has been commonly known by the Domain Name within the meaning of Policy ¶4(c)(ii) and leave Complainant to its infringement remedies in court.
In this case, however, the Panel is prompted to inquire further, primarily because it seems fairly obvious that Respondent took the name “PetroSkill” from Complainant and is using it to compete with Complainant, notwithstanding Respondent’s assertion to the contrary. The style of the name itself, with uppercase “P” and “S” and no space between the words “petro” and “skill” strongly supports this. Although both words are reasonably common, their use together in this fashion is not; it is not a string that would normally occur in common usage. The fact that Respondent is using this name to market similar services within the same industry further suggests an intent to trade on the fame and reputation of Complainant. The Panel notes also that respondents in other cases who have chosen a domain or business entity name similar to a mark owned by the complainant in their case are quick to allege that prior to the case being commenced they had never heard of the complainant or its name, and offer an explanation of how they chose their name independently of the complainant. Respondent here has done neither. Respondent did state that the Domain Name is not taken from Complainant’s mark, but it did not say that it had never heard of that mark until it received notice of the dispute, and it offered no explanation of how it happened to choose corporate names that so closely resembled Complainant’s mark. Complainant held instruction sessions in India as early as March 2008, and Respondent could have come across its name from that. Regardless of how Respondent heard of Complainant, the circumstances described above lead the Panel to conclude that the Respondent did hear of Complainant, and in selecting its corporate names chose names that would attract business because of their similarity to Complainant’s name. No other explanation seems plausible.
Having reached that conclusion, the Panel must determine the effect it should be given. While Policy ¶4(c)(i) expressly implicates the concept of good faith, there is no such express requirement in ¶4(c)(ii). Nevertheless, the UDRP was drafted to provide a prompt, inexpensive remedy for abusive domain name registrations, and the concept of “abusive” is reasonably applicable to the circumstances present here. In Madonna Ciccione a/k/a Madonna v. Dan Parisi, et. al., D2000-0847 (WIPO October 12, 2000), the respondent obtained a trademark registration for the mark MADONNA in Tunisia and asserted that that gave him rights and legitimate interests in the domain name <Madonna.com> as against the entertainer Madonna. The panel noted that Tunisian trademark registrations are issued on application without any substantive examinations, and held that “To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark . . . .” It held, in short, that good faith is a factor with respect to ¶4(c)(ii).
The obvious intent of ¶4(c)(ii) is to afford a viable defense for a respondent who registers a domain name incorporating either his own personal name or a business or trade name chosen for reasons relating to his own business independently of and not based upon the name or reputation of the complainant. This defense does not extend to a respondent who registers and uses a domain name that incorporates the name or mark of another with the intent to trade on the fame or reputation of that other, even if the respondent is able to register that name as a trade or business entity name. That is what happened in this case. In the absence of some plausible explanation for Respondent’s choice of corporate names other than to trade on the fame and reputation of the Complainant, and in light of the other circumstances detailed above, this Panel finds and determines that Respondent has not demonstrated that it has been commonly known as PetroSkill Ventures for the purposes of Policy ¶4(c)(ii).
Based upon the foregoing, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Respondent registered the Domain Name in March 2012, just after being ordered to transfer a similar domain name, <petroskill.net,> to this same Complainant. See PetroSkills, LLC v. Domain Privacy, FA 1424263 (Nat. Arb. Forum Mar. 4, 2012). It indisputably had actual knowledge of Complainant’s rights in its PETROSKILLS marks when it did so. Registering an infringing domain name with actual knowledge of the rights of another in that name is evidence of bad faith. See, 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 had “actual knowledge of Complainant's mark when registering the disputed domain name”).
The core element of Respondent’s Domain Name incorporates Complainant’s mark almost verbatim and the resolving website offers identical or similar services within the same industry as Complainant. Respondent is thus using the Domain Name to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that website. This is evidence of bad faith under Policy ¶4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent asserts that the primary focus of its business is consulting engineering, with training offered as a part of that service, and for this reason it does really compete with Complainant. That belies the fact that it does offer training services for the oil and gas industry (Respondent Exhibit A), which is Complainant’s field. By using the Domain Name as it does, it is likely that Respondent does divert Complainant’s customers to Respondent’s website. This supports Complainant’s contention that Respondent’s registration and use of the Domain Name disrupts its business, which also is evidence of bad faith under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Based upon the foregoing, the Panel finds and determines that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petroskillventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: April 5, 2013
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