Complainant is Repsol YPF, S.A. of Madrid, Spain represented internally.
Respondent is Tammy Bohn of Sturgis, South Dakota, United States of America.
The disputed domain names <repsoloil.com>, <repsol-oil.com>, <repsol-oils.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2011. On October 25, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the disputed domain name and GoDaddy.com, Inc transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 24, 2011.
On November 8, 2011, the Center received an email communication from Complainant requesting the addition of two new domain names, <repsol-oil.com> and <repsol-oils.com>, registered on behalf of Respondent to be added to the Complaint and submitting arguments in support of said request. On November 18, 2011, the Center informed Complainant that the Rules do not explicitly provide for a Complaint to be amended, after the commencement of proceedings, to include additional domain names and that it would be for the Panel to determine whether it would accept the addition of new domain names to the Complaint.
The Center appointed Ross Carson as the sole panelist in this matter on December 2, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 7, 2011, the Panel issued Administrative Panel Procedural Order No. 1 inviting Respondent to file a submission within 5 days opposing Complainant’s request to add the two additional domain names, <repsol-oil.com> and <repsol-oils.com>, to the original Complaint. As Respondent did not file any submission opposing the addition of the domain names <repsol-oil.com> and <repsol-oils.ccm>, the Panel issued Administrative Panel Administrative Order No. 2 on December 23, 2011 providing Complainant seven days from the date of the Order to file an Amended Complaint containing said additional domain names with the Center and serve the Registrar and Respondent. Complainant timely filed and effected service of the Amended Complaint. On December 29, 2011, the Center transmitted by email to GoDaddy.com, Inc a request for registrar verification in connection with the additional disputed domain names <repsol-oils.com> and <repsol-oils.com>. On the same date, GoDaddy.com, Inc transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Amended Complaint, and the proceedings re-commenced on January 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 26, 2012.
Complainant, a Spanish corporation, is one of the top ten global petroleum corporations carrying on exploration, production, refining distribution and marketing of its petroleum products in many parts of the world including the United States. As one of the leading petroleum corporations in the world, Complainant is continuously referred to in newspapers, television and Internet commentary. Complainant has been advertising and selling its motor, transmission, brake and other oils in the United States since at least the1990’s in association with its trademark REPSOL. Complainant is the owner of hundreds of trademark registrations for the trademark REPSOL alone or in combination in countries throughout the world.
Complainant is the owner of United States Trademark Registration No.2.401.604 for the trademark REPSOL (and design) registered on November 7, 2000 in relation to goods and services in International Class 4, “oils for the tanning industry, extra-fine oils for machine motors, lubricating oil and grease for motor vehicles, gasoline, propane, lubricating oil and grease for industrial machinery”. The trademark is also registered in relation to services in International Class 35, “import and export agency services in the field of petroleum and related energy fuels”.
Complainant is also the owner of dozens of country code domain names for including the word “repsoloil” in combination with a country code which it licenses to its authorized distributors.
Respondent registered the disputed domain names <repsol-oil.com > on June 13, 2006 and <repsol-oils.com> on October 22, 2006. Respondent registered the disputed domain name <repsoloil.com> on June14, 2006.
Complainant states that it is the owner of United States Registration No. 2.401.604 for the trademark REPSOL (with design), registered on November 7, 2000, for goods including motor oils used by Complainant in the United States since the 1990’s in relation to motor oils and other oils. Complainant further states that Respondent has simply incorporated Complainant's trademark REPSOL into the disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com>. The three disputed domain names are comprised of Complainant’s trademark REPSOL combined with the generic term “oil” descriptive of the goods included in Complainant’s registered trademark. Complainant submits that the addition of a generic term such as “oil” to Complainant’s trademark REPSOL, a product which is sold by Complainant in association with its trademark REPSOL, may even increase the likelihood of confusing similarity. See Eni S.p.A. v. Adam White, WIPO Case No. D2007-0364.
Complainant submits that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain names.
Complainant states that the disputed domain name <repsol-oil.com> resolves to a link “www.ktmhutt.com” which promotes motorcycle oils of Complainant’s competitors. Complainant states that the disputed domain name <repsol-oils.com> resolves to Respondent’s website “www.ktmcyclehutt.com” which also promotes Complainant’s competitor’s motorcycle oils. Complainant further states that the disputed domain name <repsoloil.com> resolves to a webpage titled “Cycle Hutt” with the words “RepsolOil.com coming soon!” beneath the title.
Complainant states that when Respondent registered the disputed domain names in June and October 2006, Complainant’s REPSOL trademark had been registered in the United States for many years in respect of motor oil and used in the United States in relation to motorcycle motor, brake and other oils used for motorcycles.
Respondent is associated with Cycle Hutt and KTM Cycle Hutt (“KTM”) who are distributors of motorcycles and every product associated with motorcycles from parts to clothing to motorcycle oils. Respondent’s Cyclehutt advertises itself as “#1 KTM Parts Dealer in the USA”.
Complainant has been deeply involved with motorcycle racing around the world since as early as 1995 when the “Repsol Honda” motorcycle team began sponsoring motorcycles using REPSOL motorcycle oils. The “Repsol Honda” motorcycle team has raced in the F.I.M. (Fédération Internationale de Motocyclisme) Road Racing World Championship Grand Prix (also known as “MotoGP”) since 1995. The “Repsol Honda” team has been taking part in the MotoGP World Championship motorcycle races in the Shanghai International Circuit, China from 2005 to 2008 with world wide implications. The “Repsol Honda” motorcycle team employs some of the world’s leading motorcycle drivers to drive its motorcycles in races.
The REPSOL trademark and colors are prominently displayed on the motorcycle and driver, with REPSOL banners and signs. Complainant and KTM sponsored the “Repsol KTM” racing team which took part in the 2006 Lisbon Dakar Rally (which took place from 31 December, 2005 to 15 January, 2006) prior to Respondent’s registration of the disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com> in June and October 2006. Complainant states that KTM has been entering racing teams in “Repsol” sponsored races since 2003. Complainant cites the decision in Pharmacia & Upjohn AB v. Sol Meyer, WIPO Case No. D2000-0785 where the panel held: "Having concluded under the previous heading that the Respondent knew when he registered the domain name that it was a combination of well known names owned by third parties, being names in which he has no right or legitimate interest, it is not difficult for the Panel to find and the Panel does in fact find that the Respondent registered the domain name in bad faith"
Complainant submits that the disputed domain names have been registered and used in bad faith. Under Paragraph 4(b)(iv) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: “(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location”.
Complainant submits that the disputed domain names <repsol-oil.com> and <repsol-oils.com> include a forwarding link to Respondent's webpage at “www.ktmcyclehutt.corn”. Respondent is not an authorized distributor, or sub-distributor or authorized dealer of Complainant. Complainant holds no relationship with Respondent, and therefore, there is not a thing which may entitle Respondent to use of Complainant's trademark as part of the disputed domain names. In order to avoid any unclearness of who is who in this case, Complainant states that it has a single authorized distributor in the United States, that is Tucker Rocky Distributing, for the exclusive sale of REPSOL's branded motorcycle lubricants. Cycle Hutt happens to be a customer who buys all kind of lubricants from different authorized dealers of Complainant and its competitors, and afterwards sells such goods. But as may be verified from Cycle Hutt webpage, “www.ktmcyclehutt.com”, Complainant’s goods are not the only ones that are sold under this webpage, but also Complainant’s competitor’s motorcycle oils such as Motorex, Motul or Mouse Racing. This is a clear evidence of unfair competition that damages the trademark REPSOL by inducting the consumer to think by entering through the disputed domain names that Cycle Hutt is a Complainant’s authorized dealer and exclusive Complainant’s branded establishment, which is not true at all.
Complainant further submits that the disputed domain name <repsoloil.com> resolves to a webpage titled “Cycle Hutt” with the words “RepsolOil.com coming soon!” beneath the title. Complainant submits that REPSOL is a very well known trademark in relation to motor oils and other oil used with motorcycles. Complainant submits that Respondent, who is a motorcycle dealer who offers for sale a wide variety of products and accessories for motorcycles and motorcycle drivers, cannot use the disputed domain name <repsoloil.com> without misleading Internet users as to its relationship with Complainant and Complainant’s products. See, Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where the panel found: "Any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off breaches of Australian consumer protection legislation, and trademark infringements".
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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:
(i) the disputed domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
As stated in the Procedural history, Complainant seeks to add the domain names <repsol-oil.com> and <repsol-oils.com>. Given the lack of response, this Panel accepts Complainant’s request in accordance with paragraph 10 and 12 of the Rules.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain names are identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of United States Trademark Registration No. 2.401.604 for the trademark REPSOL (and design), registered November 7, 2000 for goods including motor oils used by Complainant in the United States since the 1990’s in relation to motor oils and other oils. Respondent registered the disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com> in June and October 2006 well after Complainant’s REPSOL trademark was registered and used in the United States.
The disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com> incorporate the entirety of Complainant’s trademark REPSOL. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, e.g., PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS) , WIPO Case No. D2003-0696 (a domain name is "nearly identical or confusingly similar" to a complainant's mark when it "fully incorporate[s] said mark"; holding <pepsiadventure.net>, <pepsitennis.com>, and other domain names confusingly similar to complainant's PEPSI mark). The addition of a generic term such as “oil” to Complainant’s trademark REPSOL, a product which is sold by Complainant in association with its trademark REPSOL may even increase the likelihood of confusing similarity. See, Eni S.p.A. v. Adam White, WIPO Case No. D2007-0364.
The inclusion of the top level domain descriptor “.com” in the disputed domain names does not affect a finding of confusing similarity. WIPO UDRP Panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v.The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain names are confusingly similar to Complainant’s trademark REPSOL.
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademark or any trademarks confusingly similar thereto.
As of the filing date of this Complaint, the website, “www.repsoloil.com” associated with one of the disputed domain names was inactive. A second website “www.repsol-oil.com” which is associated with the disputed domain names <repsol-oil.com> and <repsol-oils.com> redirects Internet visitors to Respondent’s website “www.ktmcyclehutt.com” which promotes Complainant’s competitor’s motorcycle oils among a multitude of products associated with motorcycles and motorcycling.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain names pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in a disputed domain name. Once this showing is made, the burden of production shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain names. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain names.
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain names have been registered and used in bad faith.
When Respondent registered the disputed domain names in June and October 2006, Complainant’s REPSOL trademark had been registered in the United States for many years in respect of motor oil and used in the United States in relation to motorcycle motor, brake and other oils used for motorcycles. Respondent is associated with Cycle Hutt and KTM Cycle Hutt who are distributors of motorcycles and a multitude of product associated with motorcycles from parts to clothing to motorcycle oils. Respondent’s Cyclehutt advertises itself as “#1 KTM Parts Dealer in the USA”. Complainant has been deeply involved with motorcycle racing around the world since as early as 1995 when the “Repsol Honda” motorcycle team began sponsoring HONDA motorcycles using REPSOL motorcycle oils. The “Repsol Honda” motorcycle team has raced in the Moto GP. The “Repsol Honda” team has been taking part in the MotoGP World Championship motorcycle races on the Shanghai International Circuit, China from 2005 to 2008 with world wide implications. The “Repsol Honda” motorcycle team employs some of the world’s leading motorcycle drivers to drive its motorcycles in races. The REPSOL trademark and colors are prominently displayed on the motorcycle and driver and on REPSOL banners and signs. Complainant and KTM with whom Respondent is associated sponsored the “Repsol KTM” racing team which took part in the 2006 Lisbon Daker Rally (ending on January 2006) prior to Respondent’s registration of the disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com> in June and October 2006. Complainant states that KTM has been entering racing teams in REPSOL sponsored races since 2003. Complainant cites the decision in Pharmacia & Upjohn v. Sol Meyer, WIPO Case No. D2000-0785 where the panel held: "Having concluded under the previous heading that the Respondent knew when he registered the domain name that it was a combination of well known names owned by third parties, being names in which he has no right or legitimate interest, it is not difficult for the Panel to find and the Panel does in fact find that the Respondent registered the domain name in bad faith."
The Panel finds that Respondent registered the disputed domain names in bad faith.
Under paragraph 4(b)(iv) of the Policy, the following circumstances shall be evidence of the use and registration of a domain name in bad faith: “(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location”.
The disputed domain names <repsol-oil.com> and <repsol-oils.com> include a forwarding link to Respondent’s webpage, at “wvww.ktmcyclehutt.corn”. Complainant’s goods are not the only ones that are sold at Respondent’s webpage. Complainant’s competitors motorcycle oils such as Motorex, Motul or Mouse Racing are offered for sale at Respondent’s webpage associated with the disputed domain names <repsol-oil.com> and <repsol-oils.com>. Complainant is using the two disputed domain names to attract Internet users familiar with Complainant’s REPSOL trademark to its website where Respondent offers goods for sale and sells goods which are clearly competitive with REPSOL branded goods. In this Panel’s view, this is a clear evidence of unfair competition that damages the trademark REPSOL by inducting the consumer to think by entering through the disputed domain names that Cycle Hutt is a Repsol authorized dealer and exclusive Complainant’s branded establishment, which is not so.
Complainant has a single authorized distributor in the United States, Tucker Rocky Distributing, for the exclusive sale of Complainant’s branded motorcycle lubricants. Cycle Hutt happens to be a customer of Tucker Rocky Distributing who buys all kind of lubricants from different authorized dealers of Complainant and its competitors, and afterwards sells such goods from the Cycle Hutt webpage, “www.ktmcyclehutt.com”, Respondent is not an authorized distributor, or sub-distributor or authorized dealer of Complainant. Complainant holds no relationship with Respondent which may entitle Respondent to use of Complainant's trademark as part of a domain name. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.3 reviews panelist’s views on the question of whether a reseller of trademarked goods and services have rights or legitimate interests in a domain name which contains such trademark. The consensus view is: “normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site is accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark.”
A review of Respondent’s site at <ktmcyclehutt.com> shows that Respondent is not making a bona fide use of the disputed domain names <repsol-oil.com> and <repsol-oils.com> as the website is not used to sell only the Complainant’s trademarked goods and does not accurately and prominently disclose Respondent’s relationship with Complainant. With respect to the issue of “cornering the market”, Respondent has registered three confusingly similar domain names incorporating Complainant’s REPSOL trademark.
The disputed domain name <repsoloil.com> resolves to a webpage titled “Cycle Hutt” with the words “RepsolOil.com coming soon!” beneath the title. REPSOL is a very well known trademark in relation to motor oils and other oil used with motorcycles. Complainant submits that Respondent who is a motorcycle dealer who offers for sale a wide variety of products and accessories for motorcycles and motorcycle drivers cannot use the disputed domain name <repsoloil.com> without misleading Internet users as to its relationship with Complainant and Complainant’s products. See, Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615; where the panel found:” The very act of having acquired the domain names incorporating the complainant’s mark raises the probability of respondent using them in a manner that is contrary to complainant’s legal rights and legitimate interests. Moreover, there cannot be any legitimate use to which such disputed names can be put that would not violate complainant’s rights”. See, Telstra Corporation Limited. v. Nuclear Marshmellows, WIPO Case No. D2000-0003 where the panel found: "Any realistic use of the domain name must misrepresent an association with the Complainant and its goodwill, resulting in passing off breaches of Australian consumer protection legislation, and trademark infringements".
The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent has used the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <repsoloil.com>, <repsol-oil.com> and <repsol-oils.com> be transferred to the Complainant.
Ross Carson
Sole Panelist
Dated: February 8, 2012