WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ECOPETROL S.A. v. DomainCA (Whois Protect service) / Jan Jinchon
Case No. D2009-1579
1. The Parties
Complainant is ECOPETROL S.A. of Bogotá, D.C, Colombia, represented by Triana, Uribe & Michelsen, Colombia.
Respondent is DomainCA (Whois Protect service) of Seoul, Republic of Korea / Jan Jinchon of Shenzhen, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2009. On November 25, 2009, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the Disputed Domain Name. On November 27, 2009, Korea Information Certificate Authority Inc. d/b/a DomainCa.com 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 December 14, 2009, 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 December 15, 2009. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed another amended Complaint on December 16, 2009.
On December 14, 2009, the Center issued a Language of Proceeding notification, inviting comment from the parties. On December 15, 2009, Complainant submitted a request that English be the language of the proceeding. Respondent did not respond to the Center’s Language of Proceeding notification. On December 23, 2009, the Center notified the parties of its preliminary decision to 1) accept the Complaint as filed in English; 2) accept a Response in either Korean or English; and 3) appoint a panel familiar with both languages mentioned above, if available and also advised the parties that in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of the proceeding.
The Center verified that the Complaint together with the amended Complaints 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 proceeding commenced on December 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 12, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 13, 2010.
The Center appointed Andrew J. Park as the sole panelist in this matter on January 20, 2010. 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.
Complainant submitted a supplemental filing on December 23, 2009. The Panel has decided to accept the supplemental filing insofar as Respondent has not objected and it contains information relevant to this proceeding that was unavailable to Complainant at the time it filed its Complaint. While the Policy and Rules make no provision for unsolicited supplemental submissions, a panel may consider a supplemental submission if it raises facts that Complainant could not have been expected to raise in the Complaint. See Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry- Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165. Here, Complainant’s supplemental submission provides evidence of communications from Respondent in the nature of an offer to sell the Disputed Domain Name, received by Complainant after the date of submission of the Complaint, and the communications are relevant to the issues at hand. As the communications contain facts that Complainant could not have included in the Complaint, they are properly before the Panel.
4. Factual Background
Complainant, Ecopetrol S.A., is a Colombian based global energy and petrochemical company that focuses on oil exploration, production, transport, and supply and marketing. According to its website, Complainant is responsible for the total production of crude oil and gas in Columbia through its direct and associated operations. Complainant adopted the name Ecopetrol in 1948 and owns the following Columbian trademark registrations relevant to this dispute:
ECOPETROL (Word)
Registration No.: 216997
International Class: 4
Products: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.
In force since: March 26, 1999
In force until: March 26, 2019
ECOPETROL (Word & Design)
Registration No.: 216996
International Class: 4
Products: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.
In force since: March 26, 1999
In force until: March 26, 2019
ECOPETROL (Word & Design)
Registration No.: 217015
International Class: 42
Services: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
In force since: March 26, 1999
In force until: March 26, 2019
Complainant has registered ECOPETROL as a trademark in other Latin-American countries including Peru, and Ecuador, and filed trademark applications for ECOPETROL in the United States, Brazil and Argentina. Complainant registered the domain in 1996 and this domain name resolves to Complainant’s company website.
Respondent registered the Disputed Domain Name on April 21, 2001. As of the date of this decision, the website associated with the Disputed Domain Name contains no content apart from a link to the registrar’s home page, and thus appears to be parked. No facts are available about Respondent except for the limited information provided by Respondent in its correspondence following the filing of the Complaint.
On December 20, 2009, Respondent wrote Complainant an email offering to sell the Disputed Domain Name to Complainant for USD 1,500.00. Respondent declared in its email that it would prevail before the Center in this dispute and that thereafter it would not sell the Disputed Domain Name to Complainant for less than USD 100,000.00, if at all. In the same email communication, Respondent also threatened to initiate legal proceedings to block transfer of the domain for up to four to five years if Complainant prevailed in this proceeding.
5. Parties’ Contentions
A. Complainant
Complainant contends that each of the elements in paragraph 4(a) of the Policy is present. First, Complainant asserts that the Disputed Domain Name reproduces entirely Complainant’s distinctive trademark ECOPETROL, and that the registration and use of the Disputed Domain Name by Respondent causes confusion among those who seek to find Complainant’s official website on the Internet. Complainant thus submits that the Disputed Domain Name and Complainant’s trademarks are identical.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In support of this element of the Policy, Complainant asserts that Respondent is not commonly known by the Disputed Domain Name, that Respondent previously used the Disputed Domain Name for a website that advertised, promoted, and linked to third party websites, and that Respondent never used the Disputed Domain Name in connection with a bona fide product or service. Complainant also points out that, at one time, Respondent used the Disputed Domain Name to resolve to a website that provided information regarding Complainant’s corporate structure and stock ownership.
Complainant submits that Respondent registered the Disputed Domain Name in bad faith. Complainant asserts that the Disputed Domain Name has been registered for the purpose of attracting Internet users to Respondent’s web site, by reproducing the distinctive name “Ecopetrol” to create a likelihood of confusion between Complainant’s trademarks and the Disputed Domain Name and wrongfully usurp Complainant’s trademark rights. Complainant alleges that given the worldwide fame of its ECOPETROL trademarks Respondent most likely registered the Disputed Domain Name fully aware of Complainant’s rights.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
The registration agreement for the Disputed Domain Name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, as noted above, Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.
In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on the post-Complaint emails Respondent sent to Complainant, it does not appear as though Respondent has any difficulty comprehending and communicating in English. Respondent also chose not to participate or submit any reply in English or Korean. In light of these circumstances, the Panel concludes that it will 1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and 2) issue a decision in English.
6.2 Analysis of the Complaint
As Respondent has not filed a Response, the Panel may decide the dispute based on the Complaint and may accept all factual allegations as true. The Panel may also draw appropriate inferences from Respondent’s default. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.
Under the Policy, in order to prevail, Complainant must prove the following three elements of a claim for transfer or cancellation of Respondent’s Disputed Domain Name: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that Respondent’s Disputed Domain Name was registered and is being used in bad faith. See Policy, paragraph 4(a). Regarding paragraph 4(a)(ii), once a prima facie case is made, a respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
A. Identical or Confusingly Similar
Complainant has numerous registered trademarks for ECOPETROL that date well prior to the date of registration of the Disputed Domain Name. In addition, Complainant has produced evidence of extensive use of ECOPETROL as its name and trademark in several countries throughout the world. The Disputed Domain Name consists of Complainant’s trademark plus the descriptive top level domain suffix “.com.” It is well established that the specific top level of a domain name such as “.com,” “.org,” or “.net” 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; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429). Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademarks and that Complainant has established the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that Respondent may establish rights or legitimate interests in respect of the Disputed Domain Name by proof of any of the following non-exclusive list of circumstances: (i) before any notice to Respondent of the dispute, Respondent used, or made 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 Respondent has not acquired 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 trademark or service mark at issue. If the circumstances are sufficient to constitute a prima facie showing by Complainant of the absence of rights or legitimate interests on the part of Respondent, the evidentiary burden shifts to Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest.
There is nothing in the record to suggest that Complainant has authorized Respondent to register or use the ECOPETROL trademark or any domain name reflecting that trademark. Nothing in the record suggests that Respondent has ever been commonly known by the Disputed Domain Name, and Respondent has not denied that it was familiar with Complainant, its services and the ECOPETROL mark before it registered the Disputed Domain Name. Nor is there any evidence that since registering the Disputed Domain Name Respondent has made any demonstrable preparation to use the domain name prior to notice of this dispute. Respondent has no active web presence now and is merely parking the Disputed Domain Name courtesy of its registrar, which fails to create rights or legitimate interests in the domain name. Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729. Accordingly, Respondent’s use of the Disputed Domain Name falls outside the scope of paragraph 4(c)(i), (ii) and (iii) of the Policy.
In the Panel’s view, this combination of circumstances sufficiently establishes a prima facie case so that the evidentiary burden shifts to Respondent to prove that it has rights or legitimate interests in respect of the Disputed Domain Name. Respondent has not filed a Response and thus offers nothing to legitimize its claim to the Disputed Domain Name. Indeed, having searched the record, the Panel finds no circumstances that would indicate such rights or legitimate interests, as described paragraph 4(c) of the Policy, or otherwise. The Panel therefore finds that Complainant has prevailed on this part of its Complaint.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Complainant establish both bad faith registration and bad faith use of the Disputed Domain Name by Respondent. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001. Paragraph 4(b) of the Policy provides the following four exemplary circumstances, each of which, if proven, shall be evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Accepting all facts alleged in the Complaint as true, the Panel finds that Complainant has shown registration and use in bad faith by Respondent.
Given the global nature of Complainant’s business, and the distinctiveness of the ECOPETROL trademark, Respondent was quite likely aware of Complainant at the time it registered the Disputed Domain Name. The Panel’s conclusion is reinforced by virtue of the fact that Respondent registered the Disputed Domain Name well after Complainant registered its ECOPETROL trademarks. Accordingly, in the absence of evidence to the contrary, the Panel presumes that Respondent registered the Disputed Domain Name because of its association with Complainant, its reputation, and its business.
The record is devoid of any evidence that Respondent conducts any legitimate commercial or noncommercial business activity under the name Ecopetrol. Based on Respondent’s apparent past use of the Disputed Domain Name to sponsor listings on a website to which this domain name once resolved, the Panel concludes that 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
Respondent’s bad faith is also evidenced by its offer to sell the Disputed Domain Name to Complainant for USD 1,500.00. Such an amount would not in and of itself necessarily be indicative of bad faith, but Respondent tied this amount to the cost of a UDRP proceeding, and then tried to further leverage the sale by making its offer contingent on settlement prior to a UDRP decision and by threatening to block any transfer with subsequent litigation. Although the USD 100,000.00 amount Respondent quoted Complainant was not a current offer, this amount is far in excess of any out-of-pocket costs associated with Respondent’s purchase of the Disputed Domain Name and the Panel finds this type of contingent offer to be extortionate. See Scania CV AB v. Hong, Hee Dong, WIPO Case No. D2004-0340 (Respondent’s comparison with the fees due for a Policy proceeding, his implied threat to block a transfer of the domain name for up to five years and his contention that he received another offer for the domain name were circumstances showing an intention to browbeat Complainant to buy the domain name for more than out-of pocket expenses). Thus, the Panel is convinced that Respondent has registered and used the Disputed Domain Name in bad faith and that paragraph 4(b)(i) of the Policy has been met.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
________________________________________
Andrew J. Park
Sole Panelist
Dated: February 2, 2010
