WorleyParsonsCord Ltd. and WorleyParsons Canada Services Ltd. v. BJ Anderson
Claim Number: FA1403001550810
Complainant is WorleyParsonsCord Ltd. and WorleyParsons Canada Services Ltd. (“Complainant”), represented by Carson Mayer of WorleyParsonsCord Ltd., Canada. Respondent is BJ Anderson (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worleyparsonscord.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2014; the National Arbitration Forum received payment on March 25, 2014.
On March 26, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <worleyparsonscord.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 March 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 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@worleyparsonscord.com. Also on March 28, 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.
An untimely Response was received and determined to be deficient on April 18, 2014.
On April, 24, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Eduardo Magalhães Machado 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
1. Complainant has rights in the WORLEYPARSONS mark under Policy ¶ 4(a)(i).
a. WorleyParsonsCord Ltd. is a wholly owned subsidiary of WPCSL, which specializes in heavy industrial and energy-based construction projects across Western Canada.
b. Complainant owns registrations for the WORLEYPARSONS mark in Canada as well as in the United States.
i. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA721,182 registered August 18, 2008).
ii. United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,378,898 registered February 5, 2008).
c. Respondent’s <worleyparsonscord.com> domain name is confusingly similar to Complainant’s WORLEYPARSONS mark.
i. Respondent adds the word “Cord” to the end of Complainant’s registered WORLEYPARSONS mark.
ii. Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the<worleyparsonscord.com> domain name.
a. There is no evidence indicating that Respondent has ever been commonly known by the disputed domain name.
i. Between 2009 and 2013 Respondent was a contractor for Complainant and provided services for Complainant in the role of Project Controls Manager. At no time did Respondent have actual or ostensible authority in his role to deal with corporate branding matters such as domain name registrations.
ii. The WHOIS information for the disputed domain name lists Respondent as registrant of the domain name.
b. Respondent’s failure to make an active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
i. Respondent’s disputed domain name was originally linked to the <www.canada.worleyparsons.com> website which displayed links to Complainant’s website. Subsequent to Respondent’s departure from Complainant’s business, Respondent’s link was disabled and it is now inactive.
3. Respondent registered and is using the <worleyparsonscord.com> domain name in bad faith.
a. Respondent has offered to sell the disputed domain name to Complainant for excessive consideration.
b. Respondent’s disputed domain name is inactive, and does not link to any active website.
c. Respondent had actual or constructive knowledge of Complainant’s registrations before registering the domain names. Respondent was a contractor for Complainant’s company prior to registering the disputed domain name, and thus was aware of Complainant and its mark.
B. Respondent
1. Respondent’s domain name is locked and the information needed for the Response is inaccessible.
2. Respondent has no interest in the disputed domain name and offers to sell it for one dollar.
3. Respondent has been attempting to close this dispute for eight months.
4. Complainant’s accusations about Respondent demanding an excessive amount of money is false.
The Panel verified that Complainant is, indeed, the owner of valid United States Federal registration for the WORLEYPARSONS mark with the United States Patent and Trademark Office (USPTO) and the Canadian Intellectual Property Office (CIPO).
Despite the fact that Respondent has stated that is ready to transfer the domain name without a decision, for compensation in the amount of one dollar, the Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits. Therefore, the Panel decided to analyze the case under the elements of the UDRP.
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 Response was received on April 18, 2014. It was determined to be deficient and not in compliance with ICANN Rule 5(a) as it was received after the deadline. The Panel has nonetheless decided to consider the deficient Response.
Complainant asserts that it has rights in the WORLEYPARSONS mark under Policy ¶ 4(a)(i). Complainant explains that WorleyParsonsCord Ltd. is a wholly owned subsidiary of WPCSL, which specializes in heavy industrial and energy-based construction projects across western Canada. Complainant contends that it owns registrations for the WORLEYPARSONS mark in Canada as well as in the United States. Complainant provides evidence of its registrations with the USPTO (Reg. No. 3,378,898 registered February 5, 2008) as well as with the CIPO (Reg. No. TMA721,182 registered August 18, 2008). Panels have continuously found that providing evidence of a registration for a given mark is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See Irwin Fin. Corp. v. Belize Domain WHOIS Service Lt, FA 1028759 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant’s registration of the IRWIN mark with the USPTO and the CIPO sufficiently establish its rights in the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the WORLEYPARSONS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <worleyparsonscord.com> domain name is confusingly similar to Complainant’s WORLEYPARSONS mark. Complainant states that Respondent adds the word “Cord” and the gTLD “.com” to the end of Complainant’s registered WORLEYPARSONS mark. Panels have frequently found that adding a generic term and a gTLD to a registered mark does not distinguish it from the registered mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark).
The Panel finds that Respondent’s <worleyparsonscord.com> domain name is confusingly similar to Complainant’s WORLEYPARSONS mark under Policy ¶ 4(a)(i).
The Panel is reminded 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <worleyparsonscord.com> domain name. Complainant elaborates, claiming that there is no evidence indicating that Respondent has ever been commonly known by the disputed domain name. Complainant states that between 2009 and 2013 Respondent was a contractor for Complainant and provided services for Complainant in the role of Project Controls Manager. Complainant qualifies by stating that at no time did Respondent have actual or ostensible authority in its role to deal with corporate branding matters such as domain name registrations. Additionally, Complainant asserts that the WHOIS information for the disputed domain name lists Respondent as registrant of the domain name. Panels have frequently concluded that a respondent is not commonly known by a domain name where there is no evidence on the record to support that conclusion. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel concludes that Respondent is not commonly known by the <worleyparsonscord.com> domain name under Policy ¶ 4(c)(ii).
Complainant additionally argues that Respondent’s failure to make an active use of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Complainant contends that Respondent’s disputed domain name was originally linked to the <www.canada.worleyparsons.com> website which displayed links to Complainant’s website. Complainant further explains that subsequent to Respondent’s departure from Complainant’s business, Respondent’s link was disabled and it is not inactive. The Complainant has not provided a screen shot of what resolves from the <worleyparsonscord.com> domain name. However, the Panel has accessed the website under the Disputed Domain Name and, as of this date, it only displays pay-per-click ads automatically set up by GoDaddy. The Panel finds that Respondent’s current use of the disputed domain name does not confer rights or legitimate interests to Respondent. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Respondent registered and is using the <worleyparsonscord.com> domain name in bad faith under Policy ¶ 4(b)(i). Complainant states that Respondent has offered to sell the disputed domain name to Complainant for excessive consideration. The Panel finds that it is unclear where Respondent requested the “excessive amount”. The Respondent states that is willing to sell the disputed domain name for one dollar. Prior panels have concluded that offering to sell a domain name indicates bad faith use and registration. 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). The Panel finds that Respondent is using the disputed domain name in bad faith.
Complainant further contends that Respondent’s disputed domain name is inactive, and does not link to any active website. Once again, the Complainant has not provided a screen shot of what resolves from the disputed domain name. However, the Panel has accessed the website under the Disputed Domain Name and, as of this date, it only displays pay-per-click ads automatically set up by GoDaddy. Prior panels have found that holding a confusingly similar domain name without making an active use indicates bad faith use and registration. See L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”). The Panel finds that Respondent’s registration and failure to use the <worleyparsonscord.com> domain name was in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the <worleyparsonscord.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: May 08, 2014
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