Oceaneering International, Inc. v. Crescent / Darlignton Bryian
Claim Number: FA1910001866142
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Goldsmith, of McCarter& English, LLP, New Jersey, USA. Respondent is Crescent / Darlignton Bryian (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oceaneering-international.com> and <oceaneering-internationals.com>, registered with NameSilo, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 10, 2019; the Forum received payment on October 10, 2019.
On 10/10/2019, NameSilo, LLC confirmed by e-mail to the Forum that the <oceaneering-international.com> and <oceaneering-internationals.com> domain name are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2019 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@oceaneering-international.com, postmaster@oceaneering-internationals.com. Also on October 15, 2019, 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 November 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a global provider of engineered products and engineering services, particularly in the offshore oil and gas industry. Complainant has rights in the OCEANEERING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 983,504, registered May 7, 1974). See Compl. Ex. 4. Respondent’s <oceaneering-international.com> and <oceaneering-internationals.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the OCEANEERING mark in its entirety.
Respondent has no rights or legitimate interests in the <oceaneering-international.com> and <oceaneering-internationals.com> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not licensed or authorized Respondent to use the mark. Respondent fails to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to pass off as Complainant in furtherance of phishing by corresponding with prospective job applicants and make fraudulent job offers.
Respondent registered and uses the <oceaneering-international.com> and <oceaneering-internationals.com> domain names in bad faith. Respondent uses email addresses associated with the disputed domain names to pass off as an employee of Complainant in furtherance of phishing and recruitment fraud. Respondent had constructive and actual knowledge of Complainant’s rights in the OCEANEERING mark at the time of registration of the disputed domain names based on Respondent’s attempted phishing via the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent is a United States company that is a global provider of engineered products and engineering services, particularly in the offshore oil and gas industry.
2. Complainant has established its trademark rights in the OCEANEERING mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 983,504, registered May 7, 1974).
3. Respondent registered the <oceaneering-international.com> and <oceaneering-internationals.com> domain names on July 31, 2019.
4. Respondent uses the disputed domain names to pass itself off as Complainant in furtherance of phishing by purporting to correspond with prospective job applicants and making fraudulent job offers.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has a trademark or service mark on which it may rely. Complainant submits that it has rights in the OCEANEERING mark based on its registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its trademark registrations of the OCEANEERING mark (e.g. Reg. No. 983,504, registered May 7, 1974). See Compl. Annex 4. Accordingly, the Panel finds that Complainant has established its trademark rights in the OCEANEERING mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s OCEANEERING trademark. Complainant argues that Respondent’s <oceaneering-international.com> and <oceaneering-internationals.com> domain names are identical or confusingly similar to Complainant’s OCEANEERING mark as they incorporate the OCEANEERING mark in its entirety. While not argued by Complainant, the Panel notes that the disputed domain names add a hyphen, the generic term “international” or internationals,” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark. The addition of a generic term and a gTLD fails to distinguish a domain name sufficiently for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Likewise, the addition of a hyphen does not distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore finds that the disputed domain names are confusingly similar to the OCEANEERING mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following circumstances.
First, Complainant argues that Respondent has no rights or legitimate interests in the <oceaneering-international.com> and <oceaneering-internationals.com> domain names as Respondent is not commonly known by the disputed domain names and Complainant has not licensed or authorized Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Crescent/Darlignton Bryian,” and there is no other evidence to suggest that Respondent was authorized to use the OCEANEERING mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Secondly, Complainant contends that Respondent fails to use the <oceaneering-international.com> and <oceaneering-internationals.com> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent uses the disputed domain names to pass itself off as Complainant in furtherance of phishing by corresponding with prospective job applicants and make fraudulent job offers. Passing off as a complainant via email may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides an affidavit and attached screenshots showing that Respondent uses emails associated with the disputed domain names to send fraudulent job postings. See Compl. Annex 9. Therefore, the Panel finds Respondent does not use the disputed domain names to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant has therefore shown that Respondent has no rights or legitimate interests in the disputed domain names and Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
First, Complainant argues Respondent registered and uses the <oceaneering-international.com> and <oceaneering-internationals.com> domain names in bad faith because Respondent uses email addresses associated with the disputed domain names to pass itself off as an employee of Complainant in furtherance of phishing and recruitment fraud. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (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)”). The Panel recalls that Complainant provides an affidavit and attached screenshots asserting that Respondent uses emails associated with the disputed domain names to send fraudulent job postings. See Compl. Annex 9. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b) (iii) and (iv).
Secondly, Complainant submits that Respondent had constructive and actual knowledge of Complainant’s rights in the OCEANEERING mark at the time of registration of the disputed domain names based on Respondent’s attempted phishing via the disputed domain names. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant here argues that Respondent’s use of the disputed domain name to pass itself off as Complainant in a phishing scheme shows Respondent had actual knowledge of Complainant’s trademark rights prior to registration .As the Panel agrees, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oceaneering-international.com> and <oceaneering-internationals.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 10, 2019
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