Oceaneering International, Inc. v. Josef Ohaemesi / Phoniex Media
Claim Number: FA2002001884164
Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Goldsmith of McCarter & English, LLP, New Jersey. Respondent is Josef Ohaemesi / Phoniex Media (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oceaneeringoffshore.com>(‘the Domain Name’), registered with OwnRegistrar, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2020; the Forum received payment on February 21, 2020.
On February 21, 2020, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <oceaneeringoffshore.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2020 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@oceaneeringoffshore.com. Also on February 26, 2020, 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, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant is the owner of the mark OCEANEERING registered, inter alia, in USA and Nigeria for engineering services with first use in the USA recorded as 1970.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s mark adding only the generic term ‘offshore’ and the gTLD which does not prevent said confusing similarity.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.
The Domain Name has been attached to a site purporting to offer competing services to the Complainant and giving addresses in the same places as the Complainant has bases in the USA and Nigeria, but the addresses given on the site attached to the Domain Name do not exist and the telephone number given does not work. This is not a bona fide offering of goods or services or a legitimate noncommercial fair use. It is registration and use in bad faith capitalizing on the goodwill and reputation of the Complainant to give a false designation of origin.
The Respondent is associated with a digital marketing agency which has no connections with no apparent connection to the engineering industry.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark OCEANEERING registered, inter alia, in USA and Nigeria for engineering services with first use in the USA recorded as 1970.
The Domain Name registered in 2019 has been pointed to a site purporting to offer services competing with the Complainant giving false addresses and a non-working telephone number.
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”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's OCEANEERING mark (which is registered, inter alia, in the USA and Nigeria for engineering related goods and services with first use recorded as 1970 in the USA), the generic word ‘offshore’ and the gTLD “.com.”
The addition of a generic term and a gTLD fails to sufficiently distinguish a domain name 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)). The Panel agrees that the addition of the generic term ‘offshore’ to the Complainant's OCEANEERING mark and the gTLD “.com” does not prevent confusing similarity between the Domain Name and the Complainant's registered trade mark pursuant to the Policy.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s OCEANEERING registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Name uses the Complainant's OCEANEERING mark in its masthead so that the Respondent’s site could be taken to be an official site of the Complainant. It does not make it clear that there is no commercial connection with the Complainant and gives addresses in the same town where the Complainant is based in the USA and Nigeria. The use of false addresses and a non-working telephone number on the site and the link to a digital marketing agency also suggests the site is not being put to genuine use.
The Panel finds the use confusing and deceptive. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s trade mark ostensibly to offer competing services. The use of the same name in a highly specialised field makes it more likely than not that the Respondent is aware of the Complainant and its rights, business and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site and services on it likely to disrupt the business of the Complainant. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
The giving of false contact details also suggests bad faith registration and use.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <oceaneeringoffshore.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page