WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Crescent Point Energy Corp. v. Dallas Paisley, AAAAA2010.COM

Case No. DCO2018-0029

1. The Parties

The Complainant is Crescent Point Energy Corp. of Calgary, Alberta, Canada, represented by Norton Rose Fulbright LLP, Canada.

The Respondent is Dallas Paisley, AAAAA2010.COM of Prince George, British Columbia, Canada.

2. The Domain Name and Registrar

The disputed domain name <crescentpointenergy.co> (“the Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 17, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 16, 2018.

The Center appointed Jacques de Werra as the sole panelist in this matter on October 25, 2018. 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 which was founded in 2001 is one of Canada’s largest light and medium oil producers, based in Calgary, Alberta. The Complainant claims to own the common law trademarks CRESCENT POINT, CRESCENT POINT & DESIGN and CRESCENT POINT ENERGY (together “the Trademarks”). Following an extended period of common law use, the Complainant has applied for various trademark registrations reflecting the Trademarks (specifically in Canada and in the United States of America, it being noted that none of these trademark applications appear to have been registered based on the documents filed by the Complainant). The Complainant provides various services in association with the Trademarks including but not limited to: energy asset management services, namely, acquiring, merging, developing and managing conventional and unconventional oil and gas properties; oil and gas production services; oil and gas treatment services; and exploration and development of hydrocarbons; analysis of oil and gas fields; geophysical exploration for hydrocarbons; geophysical exploration for hydrocarbons; hydrocarbon field surveying; hydrocarbon prospecting; oil and gas well testing and surveying of oil and gas beds and fields.

The Complainant has been featured in various media financial news reports and articles reporting on the Complainant’s oil and gas exploration and production services in which reference was made to “Crescent Point” or “Crescent Point Energy” (which reflect the Trademarks) and which correspond to the Complainant’s corporate name.

The Complainant has been trading on the Toronto Stock Exchange since 2001 and on the New York Stock Exchange since 2014.

The Complainant is the registrant of the domain name <crescentpointenergy.com>, which reflects one of the Trademarks (i.e., CRESCENT POINT ENERGY) and the Complainant’s corporate name.

The Disputed Domain Name was registered on January 18, 2018.

On September 12, 2018, the Disputed Domain Name redirected users to the website “www.adjp.ca”, which contains a number of references to the Respondent’s name and personal and company contact information.

The Complainant states that on September 7, 2018, the Respondent telephoned the Complainant and alleged that he had been injured at some point in the past while working for a third party contractor on one of the Complainant’s wellsites. During this conversation, the Respondent said that he created the Disputed Domain Name to express grievances in respect of same. The Respondent also indicated that he registered the domain name <crescentpointenergy.ca>, which is subject to the jurisdiction of the Canadian Internet Registration Authority (CIRA). Based on the Complainant’s indications, the Respondent’s allegations were investigated by his employer at the time, and the relevant Workers Compensation Board, however neither party found evidence of any incident occurring.

On September 11, 2018, the Complainant issued a letter to the Respondent addressing the Respondent’s unauthorized use of the Disputed Domain Name and the <crescentpointenergy.ca> domain name and demanding that the Respondent cease infringing the Trademarks and transfer such domain names to the Complainant. The Complainant has not received a response from the Respondent in relation to this letter.

It results from the documents filed by the Complainant that the Respondent has also registered various domain names (i.e., <suncorenergy.co>, <suncor.company>, <tervita.company>, and <encana.company>), which correspond to the name and trademarks of other Canadian energy and oil and gas industry companies (i.e., Suncor Energy Inc., Encana Corporation and Tervita Corporation, which operate near identical domain names, namely <suncor.com>, <tervita.com> and <encana.com>). As in the case of the Disputed Domain Name, the domain <encana.company> automatically redirects to the Respondent’s website “www.adjp.ca”.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the Disputed Domain Name is identical to one of the Complainant’s Trademarks (i.e., CRESCENT POINT ENERGY) in Canada and the United States of America.

The Complainant claims that the Respondent did not register the Disputed Domain Name until well after the Complainant had begun using and promoting the Trademarks in association with its services and as a result had created widespread recognition of the Trademarks. The Complainant has never authorized the Respondent to reflect the Trademarks in a domain name. The Complainant has not granted the Respondent a license or other authorization for that purpose. Specifically, there is no evidence that the Respondent has: (i) actually used or is prepared to use the Disputed Domain Name in connection with a bona fide offering of goods and services; (ii) has been commonly known by the Disputed Domain Name; or (iii) is making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Complainant claims that the Respondent showed bad faith in registering the Disputed Domain Name on January 18, 2018 when the Trademarks of the Complainant were well known, both in the Respondent’s community and internationally. It further claims that the Respondent registered the Disputed Domain Name intentionally to misdirect customers looking for the Complainant’s website and that the Disputed Domain Name is being used to divert Internet users by creating a likelihood of confusion with the Trademarks, and to benefit from the Trademarks’ goodwill. The Respondent further registered the Disputed Domain Name in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name. Moreover, the Respondent has engaged in a pattern of conduct of improperly registering and using domain names which incorporate the trademarks of other entities operating in the Canadian energy and oil and gas industry and creating websites associated with these domains that improperly suggest affiliation with such entities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel must first decide whether the Complainant has rights in a trademark or service mark under paragraph 4(a)(i) of the Policy.

Pursuant to section 1.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks.

The Complainant has not established to own a registered trademark and the Panel notes that the various trademark applications to which the Complainant refers in its Complaint are not sufficient to establish trademark rights (WIPO Overview 3.0, section 1.1.4 “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i)”).

Pursuant to section 1.3 of the WIPO Overview 3.0, to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

In this case, the Panel considers that the Complainant has submitted sufficient evidence demonstrating that the Trademarks have acquired a sufficient degree of distinctiveness so that the consumers can associate the Trademarks with the Complainant’s services. The Panel particularly notes that the Complainant has been trading on the Toronto Stock Exchange since 2001 and on the New York Stock Exchange since 2014. The Panel also notes that the Trademarks have also been featured in many news reports and articles. The Panel notes that these sources refer to the Complainant’s corporate name which corresponds to one of the Trademarks (and reflects the distinctive elements of the Trademarks) so that these sources also establish the recognition of the Trademarks in the public, it being noted that the Complainant operates in a specialized market so that the degree of recognition does not need to extend to the general public of consumers.

The Panel further notes in light of the finding that shall be exposed below (see sections 6.B and 6.C) that the knowledge by the Respondent of the Complainant’s Trademarks can support the finding that the Trademarks have a sufficient degree of distinctiveness. See WIPO Overview 3.0, section 1.3 (“The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier”).

On this basis, the Panel accepts that the Complainant has valid rights in the Trademarks as required by paragraph 4(a)(i) of the Policy.

A comparison between the Disputed Domain Name and the Trademarks owned by the Complainant shows that the Disputed Domain Name is identical to one of the Trademarks (i.e., CRESCENT POINT ENERGY).

As a result, based on the rights of the Complainant in the Trademarks and on the identify between one of the Trademarks (i.e., CRESCENT POINT ENERGY) and the Disputed Domain Name, the Panel finds that paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed 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 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) the Respondent has been commonly known by the Disputed 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 Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which fully reflects one of the Trademarks owned by the Complainant and which exactly corresponds to the Complainant’s company name, in a way which can only reasonably be explained as a reference to the Complainant’s business activities. The indication that the Respondent apparently took contact by phone with the Complainant (based on the uncontradicted statements of the Complainant) and alleged that he had been injured at some point in the past while working for a third-party contractor on one of the Complainant’s wellsites would support this finding. During this conversation, the Respondent said that he created the Disputed Domain Name to express grievances in respect of same. This unestablished element would in any event (i.e., even if it were established) not create any rights to or legitimate interests of the Respondent in the Disputed Domain Name in light of the way how the Disputed Domain Name has been effectively used by the Respondent which does not reflect any alleged expression of grievances against the Complainant. See Vector Aerospace Corporation v. Daniel Mullen, WIPO Case No. D2002-0878 (the holder of the domain name has no legitimate interests in such domain name in the absence of credible evidence of the use of, or of demonstrable preparations to use, the domain name in connection with any bona fide offering of goods or services).

The Complainant has thus established without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Name, that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide attempt to offer goods and services.

The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Name, which has not been done given the Respondent’s default in this proceeding.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s services so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademarks owned by the Complainant.

The Panel further holds that the Respondent is using the Disputed Domain Name in bad faith because the Complainant has established circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting the Trademarks in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct (pursuant to paragraph 4(b)(ii) of the Policy). In this case, the record shows that the Respondent has engaged in a pattern of registering other domain names that correspond to well-established trademarks of other companies, whereby the Panel notes that these other domain names correspond to other company names and trademarks which also operate in the Canadian energy industry similarly to the Complainant.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are 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 Disputed Domain Name <crescentpointenergy.co> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: November 7, 2018