WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Anchor Drilling Fluids USA, Inc. v. anchordf, anchor drills

Case No. D2012-0385

1. The Parties

The Complainant is Anchor Drilling Fluids USA, Inc. of Tulsa, Oklahoma, United States of America, represented by Wiley Rein LLP, United States.

The Respondent is anchordf, anchor drills of Perak, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <anchordf.com> is registered with Web Commerce Communications Limited dba WebNic.cc. (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 27, 2012. On February 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2012, the Registrar transmitted by email to the Center its verification response, confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 22, 2012.

The Center appointed Keith Gymer as the sole panelist in this matter on March 29, 2012. 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.

4. Factual Background

The Complainant, Anchor Drilling Fluids USA, Inc., is an independent drilling fluids company based in the United States and has provided customized drilling fluid solutions, specialty products and well-site services for over 40 years. The ANCHOR DRILLING FLUIDS mark is the subject of pending United States Trademark Application Serial No. 85539883, filed February 10, 2012, which recites the Complainant’s sworn first use date of 1981. The Complainant operates its own website at “www.anchorusa.com”.

The Respondent is identified in the WhoIs record as “anchordf, anchor drills”, with an address said to be in Malaysia. According to the WhoIs record, the disputed domain name was registered on January 11, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant presented detailed submissions, summarized below, supported by a sworn Declaration by the Complainant’s Chief Financial Officer, Greg A. Davis, with accompanying exhibits.

The Complainant’s products and services are promoted and sold through use of the ANCHOR DRILLING FLUIDS trademark. The Complainant’s use of the ANCHOR DRILLING FLUIDS mark has resulted in annual sales of USD 150 to 250 million. The relevant purchasing public refers to the Complainant as “Anchor” and/or “Anchor Drilling Fluids”, and the purchasing public recognizes that the ANCHOR DRILLING FLUIDS mark is indicative of the origin of the goods and services promoted and sold by the Complainant. Thus, consumers have come to recognize that any marks, words, and/or domain names containing the mark ANCHOR DRILLING FLUIDS, or close approximations thereof, are indicative of the Complainant as the source of the marks and associated goods or services. The Complainant has established common law rights in and to the ANCHOR DRILLING FLUIDS mark by virtue of its extensive and exclusive commercial use of the mark for over thirty years in the United States and international commerce. It is well established that, under the Policy, a claim may be based upon common law trademark rights. The Complainant is not required to have registered the trademark(s) or service mark(s) at issue.

Respondent’s Registration and Use of a Confusingly Similar Domain Name:

The disputed domain name registered and used by the Respondent is confusingly similar to the Complainant’s ANCHOR DRILLING FLUIDS (and ANCHOR) mark. The Complainant’s ANCHOR DRILLING FLUIDS mark is highly distinctive. Moreover, as discussed above, the ANCHOR DRILLING FLUIDS mark has become well known to the public in the field of customized drilling fluid solutions, specialty products and well-site services, through the Complainant’s extensive advertising and use of the ANCHOR DRILLING FLUIDS mark in commerce since at least as early as 1981. The disputed domain name includes the dominant and arbitrary initial word “anchor” from the ANCHOR DRILLING FLUIDS mark followed by the abbreviation “df” representing an abbreviation of the second and third words of the ANCHOR DRILLING FLUIDS mark. In the present case, the Respondent has copied the dominant and arbitrary term “anchor” from the Complainant’s mark, and added the “df” abbreviation in a clear attempt to copy the ANCHOR DRILLING FLUIDS mark. Use of the abbreviation “df” instead of “drilling fluids” does not lessen the strong likelihood of consumer confusion between the disputed domain name and the ANCHOR DRILLING FLUIDS mark. The addition of the generic top-level domain “.com” to the end of the disputed domain name does not diminish its confusingly similar nature. It is well established that the top-level domain is part of the Internet address and does not add source-identifying significance.

Thus, the disputed domain name is confusingly similar to the Complainant’s ANCHOR DRILLING FLUIDS mark.

Respondent has No Rights or Legitimate Interests in the Domain Name

The Respondent has used the disputed domain name to display a website consisting of a substantially identical copy of the Complainant’s genuine website.

Under paragraph 4(c) of the Policy, a respondent may be considered to have rights or legitimate interest in a domain name if (a) the respondent uses, or undertake demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services, (b) the respondent is commonly known by the domain name, or (c) the respondent is making a legitimate noncommercial or fair use of the domain name.

Here, the Respondent has not been authorized by the Complainant to use the ANCHOR DRILLING FLUIDS mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain name to display a copy of the Complainant’s website, but with the identities of certain of the officers and employees of the Complainant and the email addresses on the website having been changed.

While the Complainant cannot be certain of the ultimate purpose of the Respondent’s registration and use of the disputed domain name, it is clear that the domain name and associated website could have been used in furtherance of some time of Internet scam or fraud in which the Respondent was purporting to be the Complainant. The Respondent’s action in seeking to pass itself off as the Complainant is evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

The Respondent’s use of the disputed domain name to display a substantially identical copy of the Complainant’s website (with subtle alterations as noted above) also constitutes copyright infringement under 17 U.S.C. § 101. The Respondent’s willful copyright infringement is further evidence of the Respondent’s lack of rights or legitimate interests in the disputed domain name.

In the Complainant’s view, the only conceivable purpose of the Respondent’s use of the disputed domain name is to trade upon the goodwill associated with the ANCHOR DRILLING FLUIDS mark and for the Respondent to thereby perpetrate some type of Internet fraud or scam.

The Domain Name Was Registered and Used in Bad Faith

That the Respondent has clearly registered and used the disputed domain name in bad faith is demonstrated by its attempt to trade on the goodwill of the ANCHOR DRILLING FLUIDS mark, and by its displaying an unauthorized copy of the Complainant’s website, all in apparent furtherance of some type of Internet scam.

Under paragraph 4(b) of the Policy, a respondent may be held to have registered and used a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site.

In the present case, the Respondent is taking advantage of the Complainant’s ANCHOR DRILLING FLUIDS mark to attract traffic to its own site, which reproduces a copy of the Complainant’s genuine website. The copied website has included minor alterations, including changes to the identities of the Complainant’s officers and employees and changes to the email addresses and contact forms on the website so that all inquiries are routed to Respondent rather than to the genuine Complainant’s contacts.

The Respondent registered the disputed domain name on January 11, 2012 and thereafter began using the domain name in apparent furtherance of some type of Internet scam. Counsel of the Complainant subsequently sent a cease and desist letter via email and FedEx to the Respondent’s addresses on February 16, 2012. No response to the email correspondence was received, and FedEx indicated that the recorded street address did not exist.

Following a contemporaneous complaint on February 16, 2012 to the Respondent’s website hosting company, the hosting services for the disputed domain name were suspended.

The Respondent registered the disputed domain name as a clear attempt to simulate the ANCHOR DRILLING FLUIDS mark. The Respondent then copied and replicated the Complainant’s entire genuine website, altered the pictures and identities of the Complainant’s officers and employees, and altered the email addresses on the imposter website so that all inquiries would be directed to Respondent. Analysis of a “ReverseMX” mail server report for the domain suggests that the Respondent has been using the mail server connected with the disputed domain name to send out a high volume of emails, which further suggests that the disputed domain name may have been used in furtherance of some type of Internet or spam email scam.

The foregoing activities clearly demonstrate that the Respondent’s registration and use of the disputed domain name has been in bad faith.

Remedies Requested

The Complainant requests that the disputed domain name, <anchordf.com>, be transferred to the Complainant.

B. Respondent

The Respondent made no reply to the Complainant’s contentions.

6. Discussion and Findings

In order for a panel to decide to grant the remedy of transfer or cancellation of a domain name to a complainant under the Policy it is necessary that the complainant must prove, as required by paragraph 4(a) of the Policy, that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a formal Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, and in that regard shall also, under paragraph 14(b) of the Rules, “draw such inferences therefrom as it considers appropriate”.

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The disputed domain name is <anchordf.com>.

The Complainant has a pending US trademark application for the mark ANCHOR DRILLING FLUIDS, which was filed after registration of the disputed domain name. However, that application, and the Declaration of Mr. Greg A. Davis for the Complainant, both include express statements confirming the use of the mark since at least 1981. The Complainant asserts that it has common law rights, arising from such use, in relation to ANCHOR DRILLING FLUIDS, and ANCHOR per se.

On the evidence, which has not been questioned by the Respondent, the Panel sees no reasons to doubt the Complainant’s entitlement to such rights. In relation to the supply of “drilling fluids”, ANCHOR is clearly the distinctive element of the ANCHOR DRILLING FLUIDS mark and it would be natural for the Complainant to be referred to simply as “Anchor” in that context.

The disputed domain name includes the identical, distinctive element “anchor”, which will be immediately recognized and read as such, together with the letters “df”, which are obviously just a direct abbreviation for “Drilling Fluids”.

The generic top-level domain suffix “.com” is not relevant to consideration of confusing similarity.

The Panel therefore concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights, and that the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate a respondent’s rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial 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.

The Respondent has made no explicit claims to any relevant prior rights of its own. The Complainant has affirmed that the Respondent is not an authorized user of the ANCHOR DRILLING FLUIDS mark, and that it was not authorized to reproduce a copy of the Complainant’s website at “www.anchordf.com”.

The Panel accepts the Complainant’s submissions, and endorses the views of previous UDRP panels in similar cases before, that such simulation of the Complainant’s website cannot be a bona fide offering, nor can it be excused as a non-commercial or otherwise fair use of the disputed domain name.

The Respondent, in identifying itself as “anchordf, anchor drills” might have claimed to have been known by the disputed domain name, but the evidence here is not of any genuine, independent association with the disputed domain name, but rather of deliberate misrepresentation. The Panel has no doubt that the Respondent adopted the “anchordf” name to act as an imposter of the Complainant.

Consequently, the Panel agrees with the Complainant’s contentions that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the following are pertinent examples of the sort of conduct which the Panel may take (without limitation) as evidence of registration and use in bad faith:

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 the respondent’s website or location or of a product or service on the respondent’s website or location.

The evidence demonstrates that the disputed domain name was used for a website which was plainly intended to mimic the Complainant’s genuine website, but with changes made so that emails would be diverted to the Respondent, with obvious deceptive intent. There was clearly potential for diversion of, and significant damage to, the Complainant’s business. The Respondent’s was operating a website using the Complainant’s name and mark, for unauthorized and abusive purposes, which could certainly have included facilitating spamming, phishing and related fraudulent activities.

In the Panel’s view, the Complainant’s evidence, which has not been rebutted or challenged by the Respondent, renders it quite apparent that the registration and use of the disputed domain name has been conducted in bad faith. The Respondent’s actions in concealing its true identity (by calling itself “anchordf”) and providing false contact details further support this conclusion.

The example of paragraph 4(b)(iv) of the Policy is therefore directly applicable to the present dispute.

Accordingly, for the purposes of the Policy, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <anchordf.com> be transferred to the Complainant.

Keith Gymer
Sole Panelist
Dated: April 10, 2012