Terra Energy Holdings LLC v. James Logan
Claim Number: FA1712001760984
Complainant is Terra Energy Holdings LLC (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is James Logan (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <terraoilandgas.com>, registered with NameCheap, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2017; the Forum received payment on February 13, 2018.
On February 15, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <terraoilandgas.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@terraoilandgas.com. Also on February 20, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant is the largest oil and gas exploration and production company in Peceance Basin, an important source of natural gas in Colorado, USA. Complainant has rights in the TERRA mark through its trademark registrations with the Unites States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,277,510, registered Aug. 29, 2017). Respondent’s <terraoilandgas.com> domain name is confusingly similar to Complainant’s TERRA mark as it merely adds the generic term “OILANDGAS” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the <terraoilandgas.com> domain name as Respondent is not licensed or authorized to use Complainant’s TERRA mark. Further, Respondent is not commonly known by the disputed domain name as the WHOIS information of record lists “James Logan” as the registrant. Additionally, Respondent has made no use of the domain name other than to use it to misdirect consumers and defraud third-parties.
iii) Respondent is using the <terraoilandgas.com> domain name to disrupt Complainant’s business and divert users for commercial gain and this indicates bad faith registration and use. Additionally, Respondent attempts to mislead users into thinking Respondent is affiliated with Complainant by impersonating Complainant’s executives and sending fraudulent emails and this demonstrates bad faith registration and use. Finally, Respondent clearly knew of Complainant and its TERRA mark at the time it registered the domain name as the domain name wholly incorporates the TERRA mark, the resolving domain replicates Complainant’s website, and Respondent impersonates Complainant and its employees.
B. Respondent
Respondent did not submit a response. The Panel notes Respondent registered the <terraoilandgas.com> domain name on November 15, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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(f), 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 (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 claims to have rights in the TERRA mark through its registration with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Complainant has sufficiently demonstrated rights in the TERRA mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <terraoilandgas.com> domain name is confusingly similar to Complainant’s TERRA mark as Respondent merely adds a generic term and a gTLD to Complainant’s mark. Such changes to a complainant’s mark does not negate any confusing similarity between the disputed domain name and the mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Complainant avers that Respondent adds the generic terms “OILANDGAS” and the gTLD “.com” to Complainant’s mark. Therefore, the Panel finds Respondent’s <terraoilandgas.com> domain name is confusingly similar to Complainant’s TERRA mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent has no rights or legitimate interests in the <terraoilandgas.com> domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its TERRA mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the infringing domain name lists “James Logan” as the registrant. See Amend. Compl. Annex C. Therefore, the Panel concludes that Respondent is not commonly known by the <terraoilandgas.com> domain name.
Additionally, Respondent has made no use of the domain name other than to use it to misdirect consumers and defraud third-parties. Using a domain name for fraudulent purposes can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the resolving domain, which appear almost identical to that of Complainant’s. Compare Compl. Annex D with Compl. Annex E. Complainant also provides a copy of an email sent by Respondent purporting to be “Harry Payne,” Complainant’s CEO, with the subject “ABOUT ME,” purporting to solicit a romantic relationship. See Compl. Annex F. As such, as the Panel agrees that Respondent uses the domain name for fraudulent purposes, the Panel holds that Respondent lacks rights and legitimate interests in the <terraoilandgas.com> domain name under Policy ¶¶ 4(c)(i) and/or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <terraoilandgas.com> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As noted above, Complainant provides screenshots of the resolving domain, which appear almost identical to that of Complainant’s. Compare Compl. Annex D with Compl. Annex E. Complainant also provides a copy of an email sent by Respondent purporting to be “Harry Payne,” Complainant’s CEO, with the subject “ABOUT ME,” purporting to solicit a romantic relationship. See Compl. Annex F. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the TERRA mark at the time of registering the <terraoilandgas.com> domain name. Actual knowledge of a complainant's right in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent clearly knew of Complainant and its TERRA mark at the time it registered the domain name as the domain name wholly incorporates the TERRA mark, the resolving domain replicates Complainant’s website, and Respondent impersonates Complainant and its employees. Compare Compl. Annex E (Complainant’s domain) with Compl. Annex D (Respondent’s domain). The Panel also notes that while Complainant’s TERRA mark (e.g., Reg. No. 5,277,510, registered Aug. 29, 2017) was registered after Respondent’s registration of the disputed domain name, Complainant’s filing date predates Respondent’s date of registration, i.e., November 15, 2016. See Compl. Annex B. Here, Complainant’s filing date was May 12, 2016. See Compl. Annex B.
Given the circumstances above, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating 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 <terraoilandgas.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 20, 2018
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