Oceaneering International, Inc. v. Online Management
Claim Number: FA1311001528891
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Okin Goldsmith of SorinRand LLP, New Jersey, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oeaneering.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 11, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <oeaneering.com> 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@oeaneering.com. Also on November 13, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <oeaneering.com> domain name, the domain name at issue, is confusingly similar to Complainant’s OCEANEERING mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides engineering services and products in the offshore oil and gas industry and is the owner of the OCEANEERING mark which it has continuously used it as early as 1970. Complainant has registered the OCEANEERING mark with the United States Patent and Trademark Office (“USPTO”) as well as with various trademark authorities located in countries around the world. Respondent’s <oeaneering.com> domain name is confusingly similar to Complainant’s OCEANEERING mark. Respondent’s disputed domain name contains Complainant’s OCEANEERING mark with the typographical error of the removal of the letter “c.”
Respondent is not commonly known by the disputed domain name. Respondent does not have trademark rights in the word “oeaneering”. The registrant of the disputed domain name is listed in the WHOIS information as “Registration Private” with a Registration organization listed as “Domains By Proxy, LLC.” Complainant has given Respondent no consent or authorization to use the disputed domain name, and Respondent is not making bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to host pay-per-click links relating to Complainant’s industry.
Respondent has a pattern of cybersquatting behavior. Respondent uses the disputed domain name to resolve to a website populated with images and links relating to Complainant’s business, none of which link to Complainant’s own Internet presence. Respondent demonstrates typosquatting behavior and had knowledge of Complainant’s rights in the OCEANEERING mark when it registered the disputed domain name on March 3, 2013.
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.”).
Complainant's business provides engineering services and products to its clients in the offshore oil and gas industry. Complainant is the owner of the OCEANEERING mark and has continuously used it since 1970 and has registered that mark with the USPTO as well as with various trademark authorities around the world, e.g., Reg. No. 983,504 registered May 7, 1974), Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA252,509 registered November 14, 1980), IP Australia (“IPA”) (e.g. Reg. No. 1,312,414 registered July 30, 2009), and the Great Britain and Northern Ireland Patent Office (“GBNIPO”) (e.g. Reg. No. 2,494,298 registered August 1, 2008). Complainant need not register a mark in the country in which a respondent resides. See 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 Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Accordingly, Complainant has rights in the OCEANEERING mark under Policy ¶ 4(a)(i) through its various registrations with trademark authorities worldwide. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO).
Respondent’s <oeaneering.com> domain name is confusingly similar to Complainant’s OCEANEERING mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s OCEANEERING mark with the typographical error removing the letter “c.” Further, the Panel notes that Respondent’s <oeaneering.com> domain name adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Prior UDRP panels have frequently held that a disputed domain name is confusingly similar to a complainant’s registered mark where it merely removes a letter and adds the gTLD “.com.” See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel concludes that Respondent’s <oeaneering.com> domain name is confusingly similar to Complainant’s OCEANEERING mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent does not have trademark rights in the “oeaneering” word. Complainant further points out that the registrant of the disputed domain name is listed in the WHOIS information as “Registration Private” with a Registration organization listed as “Domains By Proxy, LLC.” Complainant has given Respondent neither consent nor authorization to use the <oeaneering.com> domain name. A respondent is not commonly known by a disputed domain name where there is no indication on the record or in the WHOIS information suggesting such a relationship. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds that Respondent has no rights or legitimate interests in the <oeaneering.com> domain name under Policy ¶ 4(c)(ii) because it is not commonly known by the disputed domain name according to the evidence provided by Complainant.
Respondent uses the disputed domain name to host pay-per-click links relating to Complainant’s industry. Respondent’s resolving website features a main page with pictures of engineers as well as the links “Ocean,” “New Jersey Real Estates,” “Long Branch,” and “Ecology.” Respondent’s resolving website also features links including, but not limited to, “Rhinestahl ITS,” ‘Buying Solar,” “Find Amazing Discounts,” “Engineering Services,” and “Expert Mold Flow Analysis.” Some of these links such as the “Engineering Services” link, are directly related to Complainant’s industry. Some of the featured links such as “Mom Turns $145 to $7k/mth” and “Kid’s Summer Projects” are not related to Complainant or Complainant’s industry but still represent third-party businesses. Using a confusingly similar domain name to resolve to a website featuring links to third-party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)). Accordingly, Respondent is not making bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is a known cybersquatter and has a pattern of registering disputed domain names that are later transferred through a UDRP decision. Complainant lists various cases Respondent has been involved in since September 4, 2013. See BenefitFocus.com, Inc. v. Online Management, FA 1509872 (Nat. Arb. Forum Sept. 3, 2013); see also The Net-A-Porter Group Limited v. Domains by Proxy, LLC/ Online Management LTD., D2013-1403 (WIPO Oct. 2, 2013); see also The PNC Financial Services Group, Inc. v. Online Management, FA 1517908 (Nat. Arb. Forum Oct. 7, 2013); see also PFIP, LLC v. Online Mgmt., FA 15182428 (Nat. Arb. Forum Oct. 3, 2013). Prior panels have found bad faith under Policy ¶ 4(b)(ii) where a complainant provides evidence of respondent’s involvement in previous UDRP proceedings that resulted in a finding of bad faith on the part of the respondent. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Accordingly, the Panel concludes that Respondent registered the <oeaneering.com> domain name in bad faith under Policy ¶ 4(b)(ii) based on Respondent’s history of UDRP decisions which held against it.
Further, Respondent uses the disputed domain name to resolve to a website populated with images and links relating to Complainant’s business, none of which link to Complainant’s own Internet presence. Using a confusingly similar domain name to resolve to a website featuring links that compete with a complainant’s business, indicates an intent to disrupt complainant’s business in bad faith. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel, therefore, concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent demonstrates typosquatting behavior in bad faith under Policy ¶ 4(a)(iii). Respondent’s <oeaneering.com> domain name misspells Complainant’s OCEANEERING mark by elimination the letter “c.” Previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent had actual knowledge of Complainant’s rights in the OCEANEERING mark when Respondent registered the <oeaneering.com> disputed domain name. Complainant's trademark registrations for the OCEANEERING mark existed well before the registration of the <oeaneering.com> domain name. Complainant first used the OCEANEERING mark in connection with its services as early as 1970, and the first UDRP registration for the OCEANEERING mark was obtained in 1974. Respondent’s <oeaneering.com> domain name was not registered until March 3, 2013. On or before that date, Respondent had constructive knowledge of Complainant's rights in the mark. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, due to the fame of Complainant's mark, and the use made of website associated with the disputed domain name, it is clear that Respondent had actual knowledge of the OCEANEERING mark and Complainant's rights. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oeaneering.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 18, 2013
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