QatarEnergy v Qatar Energy

WIPO Case No. D2023-3436

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

QatarEnergy v. QATAR ENERGY

Case No. D2023-3436

1. The Parties

The Complainant is QatarEnergy, Qatar, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is QATAR ENERGY, United States of America.

2. The Domain Name and Registrar

The disputed domain name <expressions-qatarenergy.com> is registered with Wild West Domains, LLC

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2023.

On August 11, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 16, 2023, 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 (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on August 18, 2023 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 August 18, 2023.

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 paragraph 5, the due date for Response was September 18, 2023. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on September 28, 2023.

The Center appointed Andrea Mondini as the sole panelist in this matter on October 2, 2023. 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.

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4. Factual Background

The Complainant, QatarEnergy, is a state owned corporation that operates oil and gas activities in Qatar.

The Complainant owns numerous trademark registrations for QATARENERGY in stylized forms in many jurisdictions throughout the world, including:

- Austrian Trademark Registration No. 316677, registered on December 17, 2021;

- United Kingdom Trademark Registration No. UK00003708704, registered on January 7, 2022;

- European Union Trade Mark No. 018573695, registered on April 19, 2022.

The Complainant also holds several domain names, including the domain names <qatarenergy.qa> and

<qatarenergy.com.qa>.

The disputed domain name was registered on February 7, 2023.

The record shows that the disputed domain name resolves to a pay-per-click advertising site with links in competition with the Complainant..

On May 24, 2023, the Complainant’s lawyers sent a registrant contact form to reach out to the Respondent,

in an attempt to resolve the matter amicably. No response was received.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is identical or confusingly similar to the QATARENERGY trademark in which the

Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the word

“expressions” is not sufficient to avoid confusing similarity. It is also well established that the generic Top-

Level Domain (“gTLD”), such as “.com,” in a disputed domain name is disregarded.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The QATARENERGY trademark is associated with the Complainant, since the QATARENERGY trademark has been extensively used to identify the Complainant and its services. The Respondent has not been authorized by the Complainant to use this trademark, is not commonly known by the disputed domain name,

and there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain

name in connection with a bona fide offering of goods and services. In particular, the Respondent is not

commonly known by the disputed domain name but rather used false contact details, as evidenced by the

fact that “Qatar Energy” is not incorporated in the state of Pennsylvania and that the telephone number is

obviously false.

The disputed domain name was registered in bad faith because it is obvious that the Respondent was aware of both the Complainant and its well-known QATARENERGY trademark at the time it registered the disputed domain name, and because the Respondent used false registration details.

The disputed domain name was used in bad faith because it resolves to a parking page, and the lack of use of a domain name that coincides with a well-known trademark owned by someone else constitutes use in bad faith.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of 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

The Panel is satisfied that the Complainant has trademark rights by virtue of the registrations it owns for its

QATARENERGY trademark.

The Panel notes that the disputed domain name <expressions-qatarenergy.com> incorporates the

QATARENERGY trademark in its entirety. The addition of the term “expressions” does not prevent a finding

of confusing similarity under the Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The addition of the gTLD “.com” in the disputed domain name is a standard registration requirement and

as such is disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i).

See WIPO Overview 3.0, section 1.11.1.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the

Complainant’s QATARENERGY trademarks.

The first element of paragraph 4(a) of the Policy has been met.

B. Rights or Legitimate Interests

The Complainant states that the Respondent is not commonly known by the dispute domain name, that it has not authorized the Respondent to use the QATARENERGY trademark and that before notice of the

dispute, there is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed

domain name in good faith.

The Panel does not see any contrary evidence from the record. In particular, the Panel finds that that the

Respondent is not commonly known by the disputed domain name, but rather registered the disputed

domain in the name of “QATAR ENERGY” using false contact details in order to impersonate the

Complainant.

In the view of the Panel, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent did not provide a Response and thus failed to provide any explanations as to any rights or legitimate interests.

Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and the term

“expressions” carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.

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Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

The Complainant has shown to the satisfaction of the Panel that its QATARENERGY trademarks is well- known.

In the view of the Panel, noting that the Complainant’s trademark predates the registration of the disputed

domain name and the nature of the disputed domain name, it is inconceivable that the Respondent could

have registered the disputed domain name without knowledge of the Complainant’s well-known trademark.

Moreover, when registering the disputed domain name the Respondent used false contact information to impersonate the Complainant. In the circumstances of this case, this is evidence of registration in bad faith.

The disputed domain name resolves to a pay-per-click advertising site containing links in competition with the Complainant. The Panel thus finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship or affiliation of its website in the sense of paragraph 4(b)(iv) of the Policy.

The Panel thus finds that the disputed domain name was registered and is being used in bad faith.

The third element of paragraph 4(a) of the Policy has been 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, <expressions-qatarenergy.com>, be transferred to the Complainant.

/Andrea Mondini/

Andrea Mondini

Sole Panelist
Date: October 13, 2023