The Complainant is Subsea 7 Limited, United Kingdom, represented by Keltie LLP, United Kingdom.
The Respondent is Privacy Protect, LLC, United States of America (“United States” or “U.S.”) / Timothy D Reed, TheSEASUB, Nigeria.
The disputed domain name <thesubsea7.com> 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 August 18, 2020. On August 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 21, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on September 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 5, 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 Complaint is not a model of clarity, but the following material facts may be deduced from the Complaint, the website at “www.subsea7.com” (the “Complainant’s website”), the online database of registered English companies operated by Companies House, and a sampling of relevant trademark registrations:
Subsea 7 S.A., a publicly traded Luxembourg company formed in 1993, is a “seabed-to-surface engineering construction and services contractor to the offshore energy industry”, employing nearly 12,000 people in 33 countries (including Nigeria, where the Respondent is located). The Complainant is an English private limited company incorporated in 2001, evidently wholly owned by Subsea 7 S.A. It appears that many of the group’s headquarters operations are located in Sutton, in Greater London, which is also given as the Complainant’s address. The Complainant is the entity that holds many trademark registrations used by the group, including the following:
SUBSEA 7 (series of 6)
April 21, 2006
SUBSEA 7 (figurative)
December 14, 2012
SUBSEA 7 (figurative)
December 14, 2012
SUBSEA 7 (word)
May 13, 2013
SUBSEA 7 (standard characters)
November 25, 2014
The Complainant’s mark is promoted on the Complainant’s website. The record includes no other examples of advertising under the mark, but the Complaint makes the conclusory statement that the Complainant “has received considerable publicity by reference to its corporate name over the years.” In February 2018, the Complainant made a series of press releases announcing the extension of the partnership between the Complainant and OneSubsea, a division of international oilfield services group Schlumberger. These announcements appeared in business and general media outlets including Forbes and Reuters, bringing the Complainant’s mark renewed international attention outside specialist publications in the energy industry. This event was mentioned in the decision in Subsea 7 Limited v. Andrew Thomasson, WIPO Case No. D2018-1253, where the panel found that the SUBSEA 7 mark was “well known”.
The Registrar reports that the Domain Name was registered on July 11, 2020 in the name of a domain privacy service. After receiving notice of this proceeding, the Registrar identified the registrant as the Respondent Mr. Reed of the organization “TheSEASUB”, listing a postal address in Nigeria. That name does not appear elsewhere online, however, as the name of a Nigerian company or organization.
The Complaint attaches a screenshot of the website associated with the Domain Name on September 3, 2020, which was merely a landing page with a “coming soon” message: “Get Ready... Something Really Cool Is Coming Soon”. At the time of this Decision, the Domain Name does not resolve to an active website.
The Complainant asserts that the Domain Name is confusingly similar to its registered SEASUB 7 marks, which the Respondent lacks permission to use. As there has been nothing but a “coming soon” message associated with the Domain Name, the Complainant argues that there is no evidence of rights or legitimate interests in the Domain Name.
The Complainant infers bad faith on the part of the Respondent, because the Complainant’s mark is distinctive, used in connection with a large volume of business around the world, well known, and registered in many countries, and the Respondent took steps to conceal its identity. The Complainant refers to the “passive holding” doctrine of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and argues that there is no likely legitimate use of the Domain Name, nor one that would not be actionable.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, “[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”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant holds registered SUBSEA 7 word marks and figurative marks in which “subsea 7” is the prominent textual element. The Domain Name is nearly identical to this mark, adding the article “the” to the beginning of the string and eliminating the space before the number 7, which cannot be included in Domain Name System (“DNS”) strings for technical reasons. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.
The Panel concludes that the Domain Name is confusingly similar to the Complainant’s registered SUBSEA 7 marks for purposes of the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it 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) that the respondent 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s marks in the Domain Names.
The Respondent has not claimed trademark rights or advanced other relevant rights or legitimate interests in the Domain Name. The Domain Name is not based on a dictionary word or phrase, and the Respondent has not published an associated website that can be assessed for evidence of legitimate interests. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. These are expressly non-exclusive (“without limitation”), and as the Complainant observes, both courts and WIPO UDRP panels have addressed the “passive holding” of a domain name that has not yet been used for an active website, as is the case here. Some of these decisions are cited in WIPO Overview 3.0, section 3.3. In such cases, panelists consider the totality of the circumstances surrounding registration and use, such as “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Here, the Complainant’s SUBSEA 7 mark is evidently a highly distinctive, coined mark, registered for more than 14 years and well-known in the energy sector around the world, including the Respondent’s country. The Respondent registered the Domain Name through a domain privacy service, which can be done for legitimate reasons, but gave what appears to be a fictitious organization name that simply reverses the order of the words in the Complainant’s mark. The “coming soon” message on the published landing page gave no further identification, and the Respondent failed to reply to communications from the Complainant or the Center or to submit a Response in this proceeding. Finally, no plausible good-faith use of the Domain Name is apparent. Any likely use of the Domain Name for a website or email would entail confusion and misdirection. In sum, the circumstances of the present case are a good fit for the passive holding analysis articulated in Telstra and subsequent decisions.
The Panel concludes that the Complainant prevails on the third element of the Complaint, bad faith.
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, <thesubsea7.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: October 19, 2020
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