Complainant is Halliburton Energy Services, Inc. of Houston, Texas, United States of America (“United States”) represented by Novak Druce Connolly Bove & Quigg LLP, United States.
Respondent is Solounge Woodson of Azalea Park, Florida, United States.
The Disputed Domain Name <hallburton.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2016. On March 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s contact details. Complainant filed an amendment to the Complaint on March 23, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 14, 2016.
The Center appointed Richard W. Page as the sole panelist in this matter on April 22, 2016. 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.
Halliburton was founded in 1919 and is now one of the world’s largest providers of products and services to the energy industry. With more than 65,000 employees, representing 140 nationalities in over 80 countries, Halliburton is involved in a range of activities related to oil and gas production. Halliburton is a leader in the global energy industry and has been the recipient of numerous industry awards and significant recognition. Halliburton maintains and operates a website at “www.halliburton.com”.
As a leader in the global energy industry, Halliburton has expended effort in protecting its intellectual property rights. Halliburton has continually used the HALLIBURTON mark in commerce for more than 80 years and own numerous registrations of the HALLIBURTON mark in the United States, including Registration No. 2,575,819, registered on June 4, 2002.
Halliburton also owns trademark registrations for other HALLIBURTON-formative marks in the United States, in addition to more than 370 trademark registrations in 60 counties worldwide for the HALLIBURTON mark and the HALLIBURTON-formative marks.
Halliburton has also registered domain names incorporating the HALLIBURTON mark, including its official website at “www.halliburton.com”.
Halliburton’s annual revenues in 2014 were USD 32.9 billion. The company’s revenues in 2013 and 2012 were USD 29.4 billion and USD 28.5 billion.
The Disputed Domain Name was registered by Respondent on October 20, 2015.
Complainant alleges that its HALLIBURON mark has become one of the most recognized and respected brands in the industry, enjoys widespread recognition in the trade and is a source of significant goodwill for Complainant.
Complainant further alleges that Respondent is not affiliated with Complainant, licensed to use the HALLIBURTON mark, or licensed to register or use domain names, or associated email accounts, incorporating the HALLIBURTON mark. Nevertheless, and without Complainant’s knowledge or consent, and in direct contravention of Complainant’s consent, Respondent registered the Disputed Domain Name on October 20, 2015. The Disputed Domain Name registered by Respondent consists of the entire distinctive HALLIBURTON mark, with the omission of a single, middle vowel, and was clearly designed to be confusingly similar to the HALLIBURTON mark as further demonstrated by the use of “Halliburton Corporation” as the “Registrant Organization” in the WhoIs records.
Complainant contends that Respondent used the Disputed Domain Name to target a vendor to obtain credit and make fraudulent purchases allegedly on behalf of Complainant. Respondent attempted to defraud Complainant on at least two separate occasions through the use of fraudulent emails sent from the Disputed Domain Name, impersonating employees of Complainant to Complainant’s vendors.
Complainant argues that the Disputed Domain Name is confusingly similar to the HALLIBURTON mark, having removed just one letter from the HALLIBURTON mark. Complainant’s rights in the HALLIBURTON mark are clearly established through the registration and use, both in the United States and in numerous other countries around the world. The HALLIBURTON mark is entitled to a presumption of validity.
Complainant further argues that the omission of one middle letter that is barely noticeable between the surrounding “l” and “b” does not dispel the confusing similarity of the Disputed Domain Name, but actually demonstrates that Respondent was targeting the HALLIBURTON mark in its scheme to impersonate Complainant in order to obtain equipment. Haas Food Equipment GmbH v. VistaPrint Technologies Ltd, WIPO Case No. DCO2015-0016.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. By registering the Disputed Domain Name which is confusingly similar to the HALLIBURTON mark and attempting to masquerade as a person who works at Complainant’s company in order to fraudulently obtain equipment, it is clear that Respondent acquired the Disputed Domain Name for the sole purpose of exploiting and profiting from Complainant’s rights, title, interest and goodwill in the HALLIBURTON mark through the perpetration of an identity theft scheme involving a fraudulent email address. Nothing in the record reflects Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant alleges that Respondent cannot claim to be making any legitimate noncommercial or fair use of the Disputed Domain Name. Respondent’s true intention is the male fide use of the Disputed Doman Name in an attempt to profit from and exploit the HALLIBURTON mark through fraud.
Complainant argues that Respondent has never been commonly known by the Disputed Domain Name, which name is not clearly derived from Respondent’s name.
Complainant contends that Respondent has registered and used the Disputed Domain Name in bad faith. Complainant asserts that the examples of bad faith set forth in paragraph 4(b) of the Policy are not meant to be exhaustive. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Complainant argues that the use of the Disputed Domain Name to secure credit under false pretenses qualifies for a conclusion of bad faith. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841 (finding the disputed domain name was both registered and used in bad faith when the disputed domain name was used in a fraud scheme to send email orders immediately following registration to vendors that would appear to come from the complainant, using the names of complainant’s employees and an email domain name differing by only two letters from the complainant’s domain name); TVS Motor Company Limited v. Vistaprint Technologies Limited, WIPO Case No. DCO2014-0007 (use of disputed domain names to create emails purporting to be email addresses of complainant’s officers is “plainly bad faith”); Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163 (finding bad faith when respondent has used the disputed domain name to set up an email address from which respondent fraudulently set out equipment requests in the name of complainant, posing as an employee of complainant, and using complainant’s registered trademark in an unauthorized matter).
Respondent did not reply to Complainant’s contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441.
Even though Respondent has failed to file a response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) that the Disputed Domain Name has been registered and is being used in bad faith.
Complainant contends that it has numerous registrations of the HALLIBURTON mark and that its trademark registrations are valid and subsisting. Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. The Panel finds that for purposes of this proceeding, Complainant has enforceable rights in the HALLIBURTON mark.
Complainant further contends that the Disputed Domain Name is confusingly similar to the HALLIBURTON mark, pursuant to paragraph 4(a)(i) of the Policy.
Complainant alleges that the Disputed Domain Name registered by Respondent consists of the entire distinctive HALLIBURTON mark, with the omission of a single, middle vowel, and was clearly designed to be confusingly similar to the HALLIBURTON mark as further demonstrated by the use of “Halliburton Corporation” as the “Registrant Organization” in the WhoIs records.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the HALLIBURTON mark. The Panel finds that the Disputed Domain Name is confusingly similar to the HALLIBURTON mark, pursuant to paragraph 4(a)(i) of the Policy.
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Once Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to Respondent of the dispute, its use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the HALLIBURTON mark at issue.
Complainant has alleged that Respondent is attempting to masquerade as a person who works at Complainant’s company in order to fraudulently obtain equipment, that Respondent acquired the Disputed Domain Name for the sole purpose of exploiting and profiting from Complainant’s rights, title, interest and goodwill in the HALLIBURTON mark through the perpetration of an identity theft scheme involving a fraudulent email address. Nothing in the record reflects Respondent’s use of the Disputed Domain Name in connection with a bona fide offering of goods or services.
Complainant alleges that Respondent cannot claim to be making any legitimate noncommercial or fair use of the Disputed Domain Name. Respondent’s true intention is the male fide use of the Disputed Doman Name in an attempt to profit from and exploit the HALLIBURTON mark through fraud.
Complainant alleges that Respondent has never been commonly known by the Disputed Domain Name, which name is not clearly derived from Respondent’s name.
Complainant has sustained its burden of proving a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Respondent has not refuted Complainant’s prima facie case and the file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in paragraph 4(c) of the Policy. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of a domain name. The four criteria set forth in paragraph 4(b) of the Policy are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
Complainant alleges that Respondent’s attempts to secure credit under false pretenses qualifies for a conclusion of bad faith. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841; TVS Motor Company Limited v. Vistaprint Technologies, Limited, WIPO Case No. DCO2014-0007; Beckman Coulter, Inc. v. Suzan Wilson, WIPO Case No. D2010-1163.
Respondent has not presented any contrary evidence and the Panel finds that, based upon the evidence, Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to 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 name <hallburton.org> be transferred to the Complainant.
Richard W. Page
Sole Panelist
Date: May 8, 2016