Gulf International Lubricants, Ltd. v. Globe
Sports Management Inc.
Claim Number: FA0605000707664
PARTIES
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 Globe Sports Management Inc. (“Respondent”), Sopruse Pst 222-59, Tallinn, Harju Estonia 13412.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gulfoileurope.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
PANEL
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.
Joel Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 16, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 22, 2006.
On May 17, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <gulfoileurope.com> domain name
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that
the 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 May 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 14, 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@gulfoileurope.com by e-mail.
A timely Response was received and determined to be complete on May 31,
2006.
On June 1, 2006 a timely Additional Submission from Respondent was
received. On June 6, 2006 a timely
Additional Submission from Complainant was received.
On June 6, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel Grossman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends generally that the issues in this case were
recently decided in the virtually identical case Gulf Int’l Lubricants, Ltd
v. Gulf Oil Estonia AS, FA 616253 (Nat. Arb. Forum Feb. 13, 2006), which
involved the domain name <gulfoilestonia.com>. This decision will be referred to hereafter as the “Estonia
Decision.” Two weeks after the Estonia
Decision was issued, which transferred the name <gulfoilestonia.com> to
Complainant, Respondent registered the
name which is the subject of this matter.
Complainant urges a similar decision in the instant case. Complainant more specifically contends that
the domain name is confusingly similar to its registered mark GULF, which
Complainant’s predecessors registered in 1907.
Complainant asserts that the mark is famous throughout the world. Complainant has registered its mark in more
than 100 countries. The generic word
“oil” and the location “Europe” in the domain name will not in any manner keep
the public from identifying the domain name with GULF. Complainant further contends that Respondent
has no rights or legitimate interests in the domain name. Respondent has not used the domain name in
connection with a bona fide offering of goods or services; Respondent
has never been known by this name; and Respondent has no legitimate
noncommercial use for this name. In
fact, Respondent has been using the domain name to lure customers of
Complainant’s products, and then redirecting those customers to Respondent’s
website. Finally, Complainant asserts
that the domain name was registered and is being used in bad faith. Complainant
notes that in light of the Estonia Decision, Respondent was obviously on notice
of Complainant’s rights. For all these
reasons, Complainant contends that the name should be transferred to
Complainant.
B. Respondent
Respondent’s Response and Additional Submission do not directly address
the three issues discussed above in connection with Complainant’s contentions,
namely confusing similarity, legitimate rights or interests, and registration
and use in bad faith. The Panel
understands Respondent’s contentions on these issues as follows. First, Respondent contends that the name is
not confusingly similar to the GULF mark, and notes that other websites contain
the term “gulf,” such as <gulf.com> and <gulfair.com>. Second, Respondent appears to contend that
it has a legitimate interest in the name because Respondent sells Complainant’s
products to the public, just as it sells the products of other companies such
as Texaco or Shell. While Respondent
does not directly address the issue of bad faith, the Panel infers from its
arguments that because it has a legitimate right to sell Complainant’s
products, the name was not registered or used in bad faith. Respondent also contends that while a prior
NAF Panel ruled against it in the Estonia Decision Respondent was successful in
a subsequent court proceeding.
C. Additional Submissions
In its
Additional Submission, Complainant points out that unlike the domain names
<gulf.com> or <gulfair.com>, Respondent’s site competes with
Complainant by offering lubricant products for sale. Complainant also asserts that Respondent falsely claims that it
was successful in court proceedings relating to the domain name
<gulfoilestonia.ee>. Complainant
says that it won the Supreme Court case in Estonia related to that domain name
dispute. Complainant also notes that
Respondent has significantly changed the content of the website to avoid losing
this case.
In Respondent’s Additional Submission it disputes that Complainant won
the Estonian Supreme Court cases.
Respondent further notes that there is no law preventing it from
changing the content of its website.
FINDINGS
The Panel finds that:
a.
the name <gulfoileurope.com>
is confusingly similar to Complainant’s registered GULF mark;
b.
Respondent has
no rights or legitimate interests in the name; and
c.
Respondent
registered and is using the name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Panel notes that in the Estonia Decision the respondent did not submit a timely response, and therefore the case was decided based on Complainant’s submission. Nevertheless, this Panel finds the reasoning of the Estonia Decision persuasive in many respects. This Panel agrees that the addition of the generic term “oil” and the geographic term “Europe” do not eliminate the confusion caused by use of the GULF mark. See Space Imaging LLC v. Brownell FF-0928 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (holding that the <hoylecasino.net> domain name is confusingly similar to complainant’s “hoyle” mark, despite the generic term “casino.”).
The Panel notes that once a complainant has
made a prima facie showing in favor of its allegations, as Complainant
has here, the burden shifts to the respondent to prove that it has legitimate
interests or rights in the name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). Respondent has not met this burden. It has offered no evidence that it is
commonly known by the name “Gulf Oil Europe”, or that it is using the name to
make a bona fide offer of services.
By contrast, Complainant alleges that Respondent’s website is being used
to lure potential customers in search of Complainant’s products, and that these
customers are then redirected to Respondent’s website to make purchases of
Complainant’s (and its competitors) products.
The Panel concludes that Respondent has no rights or legitimate
interests in the domain name.
Complainant has pointed out, and Respondent
has not disputed, that the website at issue has changed dramatically during
this case. The Panel notes that it has
visited the website, which as of the Panel’s visit had nothing whatsoever to do
with lubricants or any other oil related product. Rather, the website was entirely devoted to sports. Complainant has alleged, and Respondent did
not dispute, that at one time (prior to the Panel’s visit) the website linked
to another website that displays Complainant’s famous GULF mark in an orange
disc logo, and associated marks. This
clearly suggested that Respondent was an authorized distributor of
Complainant’s products, which it is not.
Currently, the <gulfoileurope.com> website has no such
link, and is devoted to international sports management, specifically
recruiting players from Europe to play in the NBA. Obviously, such a site has nothing whatsoever to do with oil
products, and apparently is being used to fool the Panel into thinking that
there is no attempt to trade off of the Complainant’s name. However, given the uncontested evidence from
Complainant that the original website did indeed link to a site using
Complainant’s logo and purporting to sell Complainant’s product, the Panel does
not believe that the current incarnation of the site can cure the harm already
done. The Panel concludes that the
domain name was registered in bad faith, in order to lure customers who are
seeking Complainant’s products to Respondent’s website, which is clearly in bad
faith. See G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002). Even if Respondent was using the website
only in its current incarnation, as a sports site, it would be a bad faith
registration because it is using a famous mark, GULF, to attract visitors who
will be interested in Respondent’s
goods and services. See eBay, Inc,
v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16,
2001). Finally, the Panel notes that
virtually the same issues were decided in the Estonia Decision, and two weeks
after that decision was issued the Respondent registered the current name. In light of all of these facts, the Panel
concludes that the domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <gulfoileurope.com>
domain name be TRANSFERRED from Respondent to Complainant.
Joel Grossman, Panelist
Dated: June 16, 2006
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