Championx USA Inc. v Henry Elias González Gonzales, Championx SA

WIPO Case No. DCO2024-0023

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Championx USA Inc. v. Henry Elias González Gonzales, Championx SA

Case No. DCO2024-0023

1. The Parties

The Complainant is Championx USA Inc., United States of America (“U.S.”), represented by TechLaw

Ventures, PLLC, U.S.

The Respondent is Henry Elias Gonzalez Gonzales, Championx SA, Colombia.

2. The Domain Name and Registrar

The disputed domain name <championx.com.co> is registered with Hosting Concepts B.V. d/b/a

Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2024.
On March 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 21, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the

Complaint.

The Center sent an email communication to the Complainant on March 21, 2024, 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 amended Complaint on March 22, 2024.

The Center verified that the Complaint together with the amended 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 April 2, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2024.

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The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on April 25, 2024. 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 in this proceeding is a corporation of the state of Delaware, located in the U.S., and having a principal place of business in Texas, U.S.

The Championx Corporation is a global leader in chemistry solutions and highly engineered equipment and technologies that help companies drill for and produce oil and gas safely, efficiently and sustainably around the world. In particular their products and services provide efficient and safe operations throughout the

lifecycle of wells with a focus on their production phase.

The Complainant is the owner of the Trademark Registration No. 7043666, which registered May 2, 2023 for
a stylized version of its CHAMPIONX mark in the United States Patent and Trademark Office (“USPTO”).
This registration identifies numerous goods in international classes 7 and 9.

The Complainant owns trademark registrations for the trademark CHAMPIONX in other major markets around the world, including the following:

1)        International Registration No. 1547390 in International Classes 1, 7, 37, 40, and 42, registered

December 11, 2019;

2)          International Registration No. 1650226 in International Classes 1, 4, 7, 9, 35, 37, 40, and 42,

registered May 26, 2021;

3)        German Registration No. 302019017114 in International Classes 1, 7, 37, 40, and 42, registered

September 27, 2019;

4)        Singapore Registration No. 40202017953U in International Classes 1, 7, 37, 40, and 42, registered

August 19, 2021;

5)        Philippines Registration No. 1547390 in International Classes 1, 7, 37, 40, and 42, registered

November 27, 2020;

6)        Brazil Registration No. 918302153 in International Class 40, registered August 10, 2021.

The Complainant uses the trademark CHAMPIONX in its own domain names, included but not limited to the
<championx.com>, where the Complainant promotes its goods and services with the CHAMPIONX
trademark.

The disputed domain name was registered in March 7, 2024. At the time the Complaint was filed, the disputed domain name resolved to a parked site, and the record shows it was used to send at least one phishing email to one of the Complainant’s customers.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant asserts the disputed domain name is identical or confusingly similar to its
trademark due to the fact the disputed domain name entirely includes the trademark followed only by the
Top-Level Domain (“TLD”) “.com.co”.

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The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant contends that the disputed domain name has been registered and has been used in bad faith. The Complainant also asserts that email accounts related to the disputed domain name were used to send fraudulent emails with the goal of phishing information from the Complainant clients or persons by

impersonating the Complainant’s employees.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights

or legitimate interests with respect to the disputed domain name; and (iii) the disputed domain name has

been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

In the present case the Panel finds that the Complainant has established the fact that it has valid trademark rights for CHAMPIONX.

The entirety CHAMPIONX trademark is reproduced within the disputed domain name. Consequently, the disputed domain name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Indeed, the Panel finds that the disputed domain name is identical to the trademark since it is acknowledged that the TLD, in the present case “. com.co”, may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark, as it is, in this case, a technical requirement of

registration. WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

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proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

In the present case, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name as the Respondent is not an authorized dealer of goods or services in connection on which the trademark is used, nor licensed to use the trademark nor has the Complainant granted the

Respondent any permission or given its consent to use its trademarks. Furthermore, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names as there is no indication that the Respondent is commonly known by the name “championx” or that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.

In fact, the Complainant presented evidence in the present case that proves that the disputed domain name was used on at least one fake email and invoice, that gives the impression to come from the Complainant, and that was sent to a customer of the Complainant.

The Panel finds that the site related to the disputed domain name resolved to a parked site, and the disputed
domain name was used in connection with what could be considered a fraudulent email scheme. There is
no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in
connection with a bona fide offering of goods or services.

Accordingly, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The Panel finds that the Respondent was aware of the Complainant and had the Complainant’s trademark in mind when registering the disputed domain name. The record exhibits that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on or otherwise take

advantage of the Complainant’s rights, in furtherance of a fraudulent scheme. In view of all of the foregoing,
the Panel concludes that the Respondent registered and has used the disputed domain name in bad faith
within the meaning of paragraph 4(a)(iii) of the Policy.

Panels have held that the use of a domain name for illegal activity such as impersonation/passing off, or other types of fraud constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds that the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <championx.com.co> be transferred to the Complainant.

/Ada L. Redondo Aguilera/
Ada L. Redondo Aguilera
Sole Panelist
Date: May 9, 2024