Gulfoileurope.com

The timeline behind gulfoileurope.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Gulf International Lubricants, Ltd. v. Globe Sports Management Inc. Claim Number: FA0605000707664 PARTIES Complainant is Gulf International Lubricants, Ltd. (“Complainant”), represented by Jeanne Hamburg, of Norris, McLaughlin & Marcus, P.A., 875 Third Avenue, New York, NY 10022. Respondent is Globe Sports Management Inc. (“Respondent”), Sopruse Pst 222-59, Tallinn, Harju Estonia 13412. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <gulfoileurope.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Joel Grossman as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2006. On May 17, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <gulfoileurope.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On May 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 14, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gulfoileurope.com by e-mail. A timely Response was received and determined to be complete on May 31, 2006. On June 1, 2006 a timely Additional Submission from Respondent was received. On June 6, 2006 a timely Additional Submission from Complainant was received. On June 6, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel Grossman as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant contends generally that the issues in this case were recently decided in the virtually identical case Gulf Int’l Lubricants, Ltd v. Gulf Oil Estonia AS, FA 616253 (Nat. Arb. Forum Feb. 13, 2006), which involved the domain name <gulfoilestonia.com>. This decision will be referred to hereafter as the “Estonia Decision.” Two weeks after the Estonia Decision was issued, which transferred the name <gulfoilestonia.com> to Complainant, Respondent registered the name which is the subject of this matter. Complainant urges a similar decision in the instant case. Complainant more specifically contends that the domain name is confusingly similar to its registered mark GULF, which Complainant’s predecessors registered in 1907. Complainant asserts that the mark is famous throughout the world. Complainant has registered its mark in more than 100 countries. The generic word “oil” and the location “Europe” in the domain name will not in any manner keep the public from identifying the domain name with GULF. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Respondent has not used the domain name in connection with a bona fide offering of goods or services; Respondent has never been known by this name; and Respondent has no legitimate noncommercial use for this name. In fact, Respondent has been using the domain name to lure customers of Complainant’s products, and then redirecting those customers to Respondent’s website. Finally, Complainant asserts that the domain name was registered and is being used in bad faith. Complainant notes that in light of the Estonia Decision, Respondent was obviously on notice of Complainant’s rights. For all these reasons, Complainant contends that the name should be transferred to Complainant. B. Respondent Respondent’s Response and Additional Submission do not directly address the three issues discussed above in connection with Complainant’s contentions, namely confusing similarity, legitimate rights or interests, and registration and use in bad faith. The Panel understands Respondent’s contentions on these issues as follows. First, Respondent contends that the name is not confusingly similar to the GULF mark, and notes that other websites contain the term “gulf,” such as <gulf.com> and <gulfair.com>. Second, Respondent appears to contend that it has a legitimate interest in the name because Respondent sells Complainant’s products to the public, just as it sells the products of other companies such as Texaco or Shell. While Respondent does not directly address the issue of bad faith, the Panel infers from its arguments that because it has a legitimate right to sell Complainant’s products, the name was not registered or used in bad faith. Respondent also contends that while a prior NAF Panel ruled against it in the Estonia Decision Respondent was successful in a subsequent court proceeding. C. Additional Submissions In its Additional Submission, Complainant points out that unlike the domain names <gulf.com> or <gulfair.com>, Respondent’s site competes with Complainant by offering lubricant products for sale. Complainant also asserts that Respondent falsely claims that it was successful in court proceedings relating to the domain name <gulfoilestonia.ee>. Complainant says that it won the Supreme Court case in Estonia related to that domain name dispute. Complainant also notes that Respondent has significantly changed the content of the website to avoid losing this case. In Respondent’s Additional Submission it disputes that Complainant won the Estonian Supreme Court cases. Respondent further notes that there is no law preventing it from changing the content of its website. FINDINGS The Panel finds that: a. the name <gulfoileurope.com> is confusingly similar to Complainant’s registered GULF mark; b. Respondent has no rights or legitimate interests in the name; and c. Respondent registered and is using the name in bad faith. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel notes that in the Estonia Decision the respondent did not submit a timely response, and therefore the case was decided based on Complainant’s submission. Nevertheless, this Panel finds the reasoning of the Estonia Decision persuasive in many respects. This Panel agrees that the addition of the generic term “oil” and the geographic term “Europe” do not eliminate the confusion caused by use of the GULF mark. See Space Imaging LLC v. Brownell FF-0928 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (holding that the <hoylecasino.net> domain name is confusingly similar to complainant’s “hoyle” mark, despite the generic term “casino.”). Rights or Legitimate Interests The Panel notes that once a complainant has made a prima facie showing in favor of its allegations, as Complainant has here, the burden shifts to the respondent to prove that it has legitimate interests or rights in the name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002). Respondent has not met this burden. It has offered no evidence that it is commonly known by the name “Gulf Oil Europe”, or that it is using the name to make a bona fide offer of services. By contrast, Complainant alleges that Respondent’s website is being used to lure potential customers in search of Complainant’s products, and that these customers are then redirected to Respondent’s website to make purchases of Complainant’s (and its competitors) products. The Panel concludes that Respondent has no rights or legitimate interests in the domain name. Registration and Use in Bad Faith Complainant has pointed out, and Respondent has not disputed, that the website at issue has changed dramatically during this case. The Panel notes that it has visited the website, which as of the Panel’s visit had nothing whatsoever to do with lubricants or any other oil related product. Rather, the website was entirely devoted to sports. Complainant has alleged, and Respondent did not dispute, that at one time (prior to the Panel’s visit) the website linked to another website that displays Complainant’s famous GULF mark in an orange disc logo, and associated marks. This clearly suggested that Respondent was an authorized distributor of Complainant’s products, which it is not. Currently, the <gulfoileurope.com> website has no such link, and is devoted to international sports management, specifically recruiting players from Europe to play in the NBA. Obviously, such a site has nothing whatsoever to do with oil products, and apparently is being used to fool the Panel into thinking that there is no attempt to trade off of the Complainant’s name. However, given the uncontested evidence from Complainant that the original website did indeed link to a site using Complainant’s logo and purporting to sell Complainant’s product, the Panel does not believe that the current incarnation of the site can cure the harm already done. The Panel concludes that the domain name was registered in bad faith, in order to lure customers who are seeking Complainant’s products to Respondent’s website, which is clearly in bad faith. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002). Even if Respondent was using the website only in its current incarnation, as a sports site, it would be a bad faith registration because it is using a famous mark, GULF, to attract visitors who will be interested in Respondent’s goods and services. See eBay, Inc, v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001). Finally, the Panel notes that virtually the same issues were decided in the Estonia Decision, and two weeks after that decision was issued the Respondent registered the current name. In light of all of these facts, the Panel concludes that the domain name was registered and is being used in bad faith. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED Accordingly, it is Ordered that the <gulfoileurope.com> domain name be TRANSFERRED from Respondent to Complainant. Joel Grossman, Panelist Dated: June 16, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.