Hess Corporation v. Samaan Aziz
Claim Number: FA1408001573771
Complainant is Hess Corporation (“Complainant”), represented by Paul J. Reilly of Baker Botts L.L.P., New York, USA. Respondent is Samaan Aziz (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2014; the National Arbitration Forum received payment on August 6, 2014.
On August 6, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2014 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@hessenergypartners.com, postmaster@hessmidstreampartners.com, and postmaster@hessmlp.com. Also on August 7, 2014, 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 September 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the HESS mark to denote its petroleum products and related services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 832,393 registered July 25, 1967). The <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names are all confusingly similar to the HESS mark.
Respondent has no rights or legitimate interests in the domain names. First, Respondent is not commonly known by any of these <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names. Second, Respondent is using the domain names to promote hyperlinks to various third-party websites. Third, Respondent has offered to sell off the domain names.
Respondent has registered and used the domain name in bad faith. First, Respondent to sell off the domain names for $3,750. See Compl., at Attached Ex. 7. Second, Respondent capitalizes on the likelihood of Internet users’ confusion by accruing advertising revenue. Finally, Respondent registered the domain names with actual notice of the HESS mark.
B. Respondent
Respondent did not submit a response. The Panel notes the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names were all registered April 7, 2014.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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 uses the HESS mark to denote its petroleum products and related services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 832,393 registered July 25, 1967). The Panel finds this registration to sufficiently evidence Policy ¶ 4(a)(i) rights in the mark, regardless of where Respondent dwells. 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.”).
Complainant claims the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names are all confusingly similar to the HESS mark. The Panel agrees the addition of generic or related terms to these domain names is irrelevant. See, e.g., Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel further agrees the affixation of the generic top-level domain ("gTLD") “.com” does little to distinguish the domain name. 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). As such, the Panel finds all the domain names to be confusingly similar to the HESS mark under Policy ¶ 4(a)(i).
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.”).
First, Complainant contends that Respondent is not commonly known by any of these <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names. The Panel notes that “Samaan Aziz” is listed as registrant of record for all of the domain names. As such, the Panel agrees nothing in this record tends to promote the finding that Respondent is commonly known by the disputed domain namesunder 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).
Second, Complainant claims Respondent is using the disputed domain names to promote hyperlinks to various third-party websites. The Panel notes the disputed domain names contain an array of advertisements related to various industries, including oil and gas. See Compl., at Attached Ex. 6. The Panel finds the uses of the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names conform with neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii). See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Third, Complainant claims Respondent has offered to sell off the disputed domain names. The Panel notes a series of e-mails between the parties, including an offer to sell the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names. See Compl., at Attached Ex. 7. The Panels finds that the offer to sell off these domain names undermines any Policy ¶ 4(a)(ii) rights or legitimate interests Respondent may claim in these domain names. See 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).
Complainant claims Respondent sought to sell off the disputed domain names for $3,750. See Compl., at Attached Ex. 7. As the Panel believes there was an offer to sell the disputed domain names to the brand owner, Complainant here for a price far in excess of the registration cost, it finds Policy ¶ 4(b)(i) bad faith. See Zoro Tools, Inc. v. Park KyeongSook, FA 1406001562430 (Nat. Arb. Forum July 7, 2014) (“It is axiomatic that offering to sell an infringing domain name to a brand owner for a price far in excess of the registration cost…is an obvious display of the respondent’s bad faith.”). See also Prudential Ins. Co. of Am.v. TPB Fin., FA203000105218 (Nat. Arb. Forum April 8, 2002) (“finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900”).
Complainant also argues Respondent capitalizes on the likelihood of Internet users’ confusion by accruing advertising revenue. The Panel notes all of the disputed domain names resolve to a website promoting hyperlinks to various websites. See Compl., at Attached Ex. 6. In AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006), the panel found that there was a likelihood of confusion when an Internet domain name was used to promote a wide range of hyperlinks to various websites. The Panel agrees Respondent has acted in Policy ¶ 4(b)(iv) bad faith.
Complainant contends that Respondent registered the disputed domain names with actual notice of the HESS mark. The Panel infers that Respondent actually knew of Complainant’s rights in the mark in light of the Respondent’s use made of the disputed domain names and the fame of the Complainant’s mark. As such Respondent is liable of bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize “constructive notice” as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hessenergypartners.com>, <hessmidstreampartners.com>, and <hessmlp.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 12, 2014
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