Gulf International Lubricants, Ltd. v. Gulf Oil Estonia AS
Claim Number: FA0512000616253
Complainant is Gulf International Lubricants, Ltd. (“Complainant”), represented by Jeanne Hamburg, of Norris, McLaughlin & Marcus, P.A., 875 Third Avenue, New York, NY 10022. Respondent is Gulf Oil Estonia AS (“Respondent”), Sopruse Pst 222-59, Tallinn, Harju 13412, EE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gulfoilestonia.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 30, 2005.
On December 28, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.Com confirmed by e-mail to the National Arbitration Forum that the <gulfoilestonia.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.Com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@gulfoilestonia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
On February 6, 2006 the Forum received an untimely submission from Maarten H van Gent of Respondent, Gulf Oil Estonia AS, wherein he states he received notice of the proceeding after the expiration of the response time. He says the following: “Gulf International started different cases against us in Estonia and all the cases including web sites were lost by them. But I cannot send you any proofs any more because its too late. Anyway let me know what will happen.” This submission is not a sufficient Response and is untimely. Furthermore, the submission does not request an extension of time to file a response. The Panel has chosen not to consider this submission in its Decision
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." 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 <gulfoilestonia.com> domain name is confusingly similar to Complainant’s GULF mark.
2. Respondent does not have any rights or legitimate interests in the <gulfoilestonia.com> domain name.
3. Respondent registered and used the <gulfoilestonia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Gulf International Lubricants, Ltd., manufactures and markets over 400 performance lubricants and associated products. Complainant owns many international registrations for its GULF mark, including Reg. No. EE 7499 in the Republic of Estonia (issued March 19, 2001).
Complainant has not authorized Respondent as a distributor. Rather, Complainant has appointed a company called U.S. Parts Bali AS to be its official distributor of products covered by the GULF trademarks in Estonia. U.S. Parts Bali AS uses the GULF trademarks in its business activities with the permission of Complainant and in accordance with the rules regulating the use of the GULF trademarks set forth in Complainant’s trademark usage guidelines.
Respondent’s <gulfoilestonia.com> domain name was registered on March 3, 2003. Respondent’s <gulfoilestonia.com> domain name resolves to a website that offers the unauthorized sale of Complainant’s family of products.
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."
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.”).
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.
Complainant has established rights in the GULF mark through registration with the Republic of Estonia. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant alleges that Respondent’s <gulfoilestonia.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name features Complainant’s entire GULF mark and adds the generic terms “oil,” a term describing the business in which Complainant engages, and the geographic name “Estonia.” The Panel finds that the addition of such terms fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <gulfoilestonia.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the
confusingly similar <gulfoilestonia.com> domain name to operate a
website in which Respondent allows Internet users to purchase Complainant’s
products without authorization for Respondent’s own commercial gain. The Panel finds that such use is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Caterpillar
Inc. v. Huth, FA 169056 (Nat. Arb. Forum
Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because
Respondent competes with Complainant by selling Complainant's used parts
without a license from Complainant to do so.”); see also Ultimate Elecs.,
Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
Furthermore, Complainant contends that Respondent is
neither licensed to register names featuring the GULF mark nor commonly known
by the disputed domain name. Although
Respondent is named as “Gulf Oil Estonia” in the WHOIS information, the Panel
finds that, in the absence of evidence to suggest otherwise, Respondent is not
commonly known by the <gulfoilestonia.com> domain name pursuant to
Policy ¶ 4(c)(ii). See Ultimate
Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003)
(“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on
its web page and in its domain name . . . , there is no evidence that
Respondent is commonly known by the <ultimateelectronics.net> domain name
pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides
Complainant authorized to trade as ULTIMATE ELECTRONICS.”); see also Yoga
Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by”
the <shantiyogaworks.com> domain name despite listing its name as
“Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the
Panel that the respondent was ever ‘commonly known by’ the disputed domain name
prior to its registration of the disputed domain name”).
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the confusingly similar <gulfoilestonia.com> domain name to sell Complainant’s products in direct competition with Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Furthermore, Complainant contends that Internet users will
likely become confused as to Complainant’s sponsorship of or affiliation with
the resulting website. The Panel finds
this to be further evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad faith.”);
see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10,
2003) (“As Respondent is using the domain name at issue in direct competition
with Complainant, and giving the impression of being affiliated with or
sponsored by Complainant, this circumstance qualifies as bad faith registration
and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gulfoilestonia.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 13, 2006
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