Complainant is Halliburton Energy Services, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Lemar Daniels, United States.
The disputed domain name <halliburtonus.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2020. On January 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 3, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 4, 2020.
The Center verified that the Complaint together with 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 3, 2020. 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.
The Panel notes that Complainant, upon the Registrar’s disclosure of the underlying registrant information, chose to add the underlying registrant as a co-respondent in the amended Complaint along with the privacy or proxy registration service initially named as the Respondent in the original Complaint. The Rules define the respondent as the holder of a domain-name registration against which a complaint is initiated. Furthermore, Section 4.4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that a complainant, when provided with underlying registrant information which differs from the respondent named in the original complaint, may either add the disclosed underlying registrant as a co-respondent, or replace the originally named privacy or proxy service with the disclosed underlying registrant. UDRP panels retain their discretion to determine the respondent against which the case should proceed. WIPO Overview 3.0, section 4.4.5. Here, the Panel determines that the present case should proceed solely against the underlying registrant, Lemar Daniels, since he is the actual holder of the domain name registration against which the Complaint was initiated and there is no evidence that the privacy or proxy provider is related to him. See id.
Complainant is one of the world’s largest providers of products and services to the oil and gas industry, with over 60,000 employees, and operations in approximately 80 countries. It has received numerous industry awards and achieved significant national and international recognition. Complainant’s annual revenues in 2017 and 2018 were USD 20.6 billion and USD 23.9 billion, respectively. Complainant has been continually using its HALLIBURTON trademark (“HALLIBURTON Mark”) for nearly 80 years. It owns various United States registrations for the HALLIBURTON Mark, including United States registrations 2,575,819 and 2,575,840, which were both registered on June 4, 2002. Complainant has also registered various domain names incorporating its HALLIBURTON Mark, including its official “www.halliburton.com” website, which was registered October 17, 1995.
The disputed domain name was registered on March 21, 2019 and redirects visitors to Complainant’s website.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s HALLIBURTON Mark because it reproduces identically and entirely the HALLIBURTON mark, with the addition of the International Organization for Standardization (ISO) country code for the United States, “US”. Complainant asserts that the inclusion of this ISO country code does nothing to dispel the confusing similarity between the disputed domain name and its HALLIBURTON Mark.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name. According to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain name because it fully incorporates Complainant’s mark and merely redirects visitors to Complainant’s main website. Complainant argues that these facts, along with the lack of any evidence demonstrating use of the disputed domain name in connection with a bona fide offering of goods and services, clearly indicate that Respondent acquired the disputed domain name for the sole purpose of exploiting Complainant’s rights, title, interest and goodwill in the HALLIBURTON mark. Complainant further alleges that Respondent is not commonly known by the disputed domain name, is not associated or affiliated to Complainant in any way and was never licensed or authorized to use Complainant’s Halliburton Mark.
Lastly, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. According to Complainant, Respondent must have had constructive or actual knowledge of Complainant’s rights in the HALLIBURTON Mark given its worldwide notoriety, the existence of United States trademark registrations for it at the time the disputed domain name was registered, and the complete incorporation of the HALLIBURTON Mark in the disputed domain name. According to Complainant, that the disputed domain name merely resolves to Complainant’s website further demonstrates Respondent’s bad faith use.
Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview 3.0 states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the HALLIBURTON Mark through its United States registrations.
With Complainant’s rights in the HALLIBURTON Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s HALLIBURTON Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s HALLIBURTON Mark is fully incorporated in the disputed domain name, and the addition of the descriptive or geographical term “US” does not prevent a finding of confusing similarity. See Merck KgaA v. Registrant [3644982]: Chen Yan Hua, WIPO Case No. D2011-1010. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s HALLIBURTON Mark.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, Respondent has not submitted any arguments or evidence to rebut the Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the HALLIBURTON Mark in any way. Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name has no other purpose than redirecting users to Complainant’s main website. This is clear indicia of cybersquatting intent, which categorically cannot be considered as a bona fide offering of goods and services. WIPO Overview 3.0, section 2.2. Lastly, there is no evidence suggesting that Respondent is commonly known by the disputed domain name.
Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii).
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and numerous registrations of the HALLIBURTON Mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the HALLIBURTON trademark when it registered the disputed domain name, or knew or should have known that they were identical or confusingly similar to Complainant’s marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4, see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Here, the disputed domain name completely incorporates the HALLIBURTON Mark and merely adds the country code “US”, meaning that bad faith registration of the disputed domain name can be presumed.
Furthermore, the disputed domain name merely redirects Internet users to Complainant’s main website located at <halliburton.com>. UDRP panels have found that evidence showing that a domain name redirects to the complainant’s website supports a finding that a respondent registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”); see also, e.g., One2move International ApS v. One2Move, WIPO Case No. D2018-2117; Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIPO Case No. D2005-0587. This demonstrates that the disputed domain name was also used in bad faith by Respondent.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraph 4(b)(iv) 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 name <halliburtonus.com> be transferred to Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: April 17, 2020