QatarEnergy v Qatar Energy, and Qatar Energy, tenders-qatarenergy-qa

WIPO Case No. D2023-3498

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

QatarEnergy v. Qatar Energy, and Qatar Energy, tenders-qatarenergy-qa

Case No. D2023-3498

1. The Parties

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

The Respondent is Qatar Energy, Nigeria, and Qatar Energy, tenders-qatarenergy-qa, Nigeria.

2. The Domain Names and Registrar

The disputed domain names <tender-qatarenergy-qa.com> and <tenders-qatarenergy-qa.com> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2023. On August 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 17, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names 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 August 18, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint adding the Registrar-disclosed registrants as formal Respondent and provide relevant arguments or evidence demonstrating that all named registrants are, in fact, the same entity and/or that all disputed domain names are under common control; and/or indicate which disputed domain name will no longer be included in the current Complaint. The Complainant filed the amended Complaints including a consolidation request on August 23 and 24, 2023.

The Center verified that the Complaint together with the amended Complaints 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 August 25, 2023. In accordance with the Rules, paragraph
5, the due date for Response was September 14, 2023. The Respondent did not submit any response.

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Accordingly, the Center notified the Respondent’s default on September 19, 2023.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 25, 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.

4. Factual Background

The Complainant, QatarEnergy, is a Qatari state-owned corporation founded in 1974 which operates all oil and gas activities in Qatar. On October 11, 2021, the Complainant, formerly known as “Qatar Petroleum” changed its name to “QatarEnergy”.

The Complainant owns many trademark registrations incorporating the term QATAR ENERGY including:

-	Austrian Trademark No. 316677, QATAR ENERGY (& Design), registered on December 17, 2021;
−	United Kingdom Trademark No. UK00003708704, QATAR ENERGY (& Design), registered on January 7, 2022;
−	European Union Trade Mark Registration No. 018573695, QATAR ENERGY (& Design), registered on April 19, 2022; and
−	European Union Trade Mark Registration No. 018573702, QATAR ENERGY (& Design), registered on April 19, 2022.

The Complainant is the owner of domain names consisting of the term Qatar Energy, for instance,
<qatarenergy.qa> and <qatarenergy.com.qa>.

The disputed domain names were registered on February 25, 2023. The disputed domain names currently do not resolve to any active website. According to the Complaint, the disputed domain names previously resolved to the same Zoho parking pages which provided templates for building websites.

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 names.

Notably, the Complainant contends that:

- the disputed domain names are confusingly similar to its trademarks;

- the Respondent has no rights or legitimate interests in respect of the disputed domain names;

- the Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

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

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6. Discussion and Findings

6.1 Procedural Issue: Consolidation of Multiple Registrants

The Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the disputed domain name are subject to common control by the same entity or connected parties. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name

registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 4.11.2.

Based on the available record, the Panel notes that:

- The disputed domain names were registered on the same day and using the same Registrar;

- Both disputed domain names are on the same name servers;

- Both disputed domain names contain the same structure using the term “tenders” (one in plural and the
other in singular) plus the addition of the Complainant trademark and the two letter “qa” (for Qatar);

- the postal address for the disputed domain name registrants are the same, and their email addresses
have a similar pattern;

- Both disputed domain names used to resolve to the same parking page.

Considering the above, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants in a single proceeding.

6.2 Substantive Issues: Three Elements

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements with respect to each disputed domain name:

(i)      the disputed domain name 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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proof of each element is borne by the Complainant. The Respondent’s default does not by itself mean that the Complainant is deemed to have prevailed. See WIPO Overview 3.0, section 4.3.

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 names. WIPO Overview 3.0, section 1.7.

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Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark is reproduced within the disputed domain names. Accordingly, the
disputed domain names are identical or confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

While the addition of other terms “tender/s” and “qa” may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

Based on the available record, 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.

While 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 often impossible 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. 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.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. 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 names such as those enumerated in the
Policy or otherwise.

The disputed domain names are currently inactive. The Complainant states in its Complaint that several domain names have been registered in the past using its trademark and logos for purposes of sending fraudulent emails. The Complainant has filed successfully several UDRP complaints with respect to those cases. The Complainant states that the composition of the current disputed domain names suggests that they have also been registered to be used in connection with a similar fraudulent scheme and contacted the Registrar, resulting in the disputed domain names being suspended for the time being.

Furthermore, the composition of the disputed domain names, comprising the Complainant’s QATAR ENERGY trademark in its entirety, the geographical term “qa” and the term “tender” (in singular and plural forms), carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

Based on the available record, 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.

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In the present case, the Panel notes that:

- the Complainant states that several domain names have been registered for purposes of committing
fraud using its trademark and the disputed domain name share the same naming pattern;

- the Respondent is in default;

- the disputed domain names were registered after the Complainant’s registration of its trademarks.

- currently the disputed domain names were suspended and they are not in use, and they previously
resolved to the same Zoho parking page with no substantive content.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the record, the Panel finds the non-use of the disputed domain names does not prevent a finding of bad faith in the circumstances

of this proceeding. While panelists will look at the totality of the circumstances in each case, factors that
have been considered relevant in applying the passive holding doctrine include: (i) the degree of
distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response
or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its
identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the
implausibility of any good faith use to which the domain name may be put. WIPO Overview 3.0, section 3.3.

Having reviewed the record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, the composition of the disputed domain names, the impossibility that the disputed domain names may be put, and the Respondent did not file a response, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 names, <tender-qatarenergy-qa.com>, and <tenders-qatarenergy-qa.com>, be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: October 9, 2023.