H2oceaneering.com

The timeline behind h2oceaneering.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 Oceaneering International, Inc. v. LJD c/o Osmund Holm-Hansen Claim Number: FA0802001154298 PARTIES Complainant is Oceaneering International, Inc. (“Complainant”), represented by Susan Okin Goldsmith, of Duane Morris LLP, 744 Broad Street, Newark, NJ 07102. Respondent is LJD c/o Osmund Holm-Hansen (“Respondent”), 9527 Poole Street, La Jolla, CA 92037. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <h2oceaneering.com>, registered with Dotster. PANEL The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding. Linda M. Byrne as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 29, 2008. On March 4, 2008, Dotster confirmed by e-mail to the National Arbitration Forum that the <h2oceaneering.com> domain name is registered with Dotster and that the Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 March 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 31, 2008 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@h2oceaneering.com by e-mail. A timely Response was received and determined to be complete on March 31, 2008. On April 8, 2008, Complainant’s Additional Submission was received. An Additional Submission was submitted by Respondent on April 10, 2008, and was determined to be deficient because it was received after the deadline for submissions. Nevertheless, in the interest of fairness, the Panel has chosen to consider this Additional Submission in its Decision. On April 8, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant submits that it owns several trademark registrations for OCEANEERING in the United States and many other countries. Complainant argues that Respondent’s domain name <h2oceaneering.com > is confusingly similar to Complainant’s trademark; that Respondent does not have any rights or legitimate interest with respect to the domain name; and that the domain name has been registered and used in bad faith by virtue of the Respondent’s attempt to sell the domain name to Complainant for financial gain, Respondent’s failure to submit evidence of bona fide business preparations associated with the name, and by virtue of Respondent’s intention to attract visitors and re-direct them to other websites that generate click-through revenue for Respondent. B. Respondent Respondent argues that Complainant owns no valid trademark rights in the term OCEANEERING because the term is a generic word relating to “people working and exploring the oceans of the world.” Respondent states that his legitimate interest in the domain name relates to the fact that Respondent’s initials and his father’s initials are “OHH” and that Respondent’s nickname is H2O. Respondent also states that for several years he has intended to start an “oceaneering consulting firm” with his father, who is a world renowned Oceanographer” Respondent contends that “h2” reflects the initials of his last name Holm-Hansen and that the term “oceaneering” is a generic term relating to the business in which Respondent intends to enter. Respondent alleges that he did not act in bad faith and that he was not even aware of Complainant at the time the domain name was registered. Although he acknowledges the fact that he made a proposal to sell the domain name, Respondent argues that he made the offer only after Complainant demanded that he transfer the domain name free of charge. C. Additional Submissions On April 8, 2008, Complainant’s Additional Submission was received. This document points out that there is no dictionary entry for the term “oceaneering” and that the U.S. registrations for OCEANEERING have achieved incontestable status with the U.S. Patent and Trademark Office. The Additional Submission also asserts that Respondent’s proposed price for the change of its company name and domain name, $18,750.00, was well in excess of any documented costs. On April 10, 2008, Respondent’s Additional Submission was received. Respondent explained that the name of the Respondent, LJD, is the wholesale apparel company of the individual who was responding to the Complaint, Osmund Holm-Hansen III. Respondent stated that the monetary offer was made only after Complainant’s initial demand for transfer of the domain name. Finally, Respondent stated the term “ocean engineering” is a generic term found in dictionaries, and that Dictionary.com states that “ocean engineering” is also called “oceaneering.” FINDINGS This Panel concludes that the term OCEANEERING is a valid enforceable trademark, as evidenced by Complainant’s portfolio of trademark registrations. Complainant’s name has appeared in many media reports over the years. The term “ocean engineering” appears in at least one dictionary, along with the explanation that “ocean engineering” is “also called oceaneering.” Respondent’s Response was printed on letterhead stationery for “H2Oceaneering Ocean Sciences and Consulting.” The evidence regarding Respondent’s efforts to establish a consulting firm include Respondent’s statements concerning his intentions with information about his father/business partner, the business stationery featuring “H2Oceaneering,” and the fact that the <h2oceaneering.com> domain name was registered on April 14, 2007. The parties exchanged correspondence regarding this matter, and engaged in one telephone conversation. In response to Complainant’s initial cease and desist letter, Respondent stated, “ ‘h2oceaneering’ is noticeably and distinctly different from ‘oceaneering’.” There appears to be no evidence that Respondent had actual knowledge of Complainant until after Complainant had filed this Complaint. On the issue of bad faith, there appears to be no clear evidence that the Respondent registered the domain name “primarily for the purposes of selling it to the Complainant.” Respondent’s letter stated, “If [Complainant] requests that I change the name of my company, my website, and all the other direct and indirect implications such a change would entail, it follows that I must be compensated accordingly. Therefore I am offering to sell [Complainant] my web domain ‘h2oceaneering’, and change the name of my company for…$18,750.00.” 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 Complainant owns several trademark registrations around the world for OCEANEERING, including U.S. Reg. No. 983,504 issued May 7, 1974. This registration claims that the Complainant has been using the OCEANEERING mark since 1970 for underwater construction, maintenance and repair; and underwater engineering, diving and surveying services. This Panel concludes that Complainant has rights in the OCEANEERING mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bing Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)). The difference between Complainant’s trademark and the disputed domain name <h2oceaneering.com> is the addition of the “h2” term. The “h2” term combines with the “O” in “Oceaneering” to form the chemical abbreviation for water, H2O. The terms “h2” or “H2O” have no relation to Complainant’s trademark or company name, and Complainant does not use the combination “H2Oceaneering.” This Panel concludes that the “H2” or “H2O” addition may be sufficient to distinguish Respondent’s domain name from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Amazon.com, Inc. v. Integration Unlimited, Inc., FA 183725 (Nat. Arb. Forum Sept. 25, 2003) (finding the <amazonallergy.com> domain name was not confusingly similar to the complainant’s AMAZON.COM mark because the additional term “allergy” bore “little to no actual relationship with the activities performed under Complainant's AMAZON.COM mark”). However, in view of this Panel’s decision below, a finding on the issue of confusing similarity is not necessary. Rights or Legitimate Interests Respondent contends it registered the <h2oceaneering.com> domain name for use in connection with an “oceaneering” consulting firm. Respondent, Osmond Holm-Hansen III, states that his father, Osmund Holm-Hansen Sr., is a world renowned oceanographer and that Respondent intended to start a consulting firm drawing on the experience and expertise of Osmund Holm-Hansen Sr. Respondent’s correspondence to Complainant, which was sent before the filing of this Complaint, was printed on letterhead stationery with the company name “H2Oceaneering” above the words “Ocean Sciences and Consulting.” The Respondent’s logo encases “H2O” within a logo, with the letters “ceaneering” to the right of the oval. Moreover, Respondent contends that the <h2oceaneering.com> domain name is a combination of his nickname and a generic term. Respondent contends that “h2” reflects the initials of his last name Holm-Hansen and that the term “oceaneering” is a generic term relating to the business in which Respondent intends to enter. As Respondent noted, the term “oceaneering” is synonymous with “ocean engineering,” according to Dictionary.com. This Panel concludes that Respondent has established rights or legitimate interests in the <h2oceaneering.com> domain name pursuant to Policy ¶ 4(c)(ii). See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that the complainant failed to establish that the respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is wholly comprised of generic words, even though the complainant is the owner of the FILMNET mark). The Panel concludes that Respondent has submitted evidence sufficient to establish rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001) (finding the respondent provided substantial evidence of his demonstrable preparations to use the domain name with a business involving the sale of scrap materials prior to receiving notice of the present dispute). Registration and Use in Bad Faith In view of the Panel’s conclusion above that the Respondent has a legitimate interest in the disputed domain name, the Panel declines to analyze the bad faith element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”). DECISION In view of the Panel’s determination that all three elements required under the ICANN Policy have not been established, the Panel concludes that relief shall be DENIED. Linda M. Byrne, Panelist Dated: April 22, 2008 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.