Subsea 7 Limited v Subsea Offshore

WIPO Case No. D2023-2532

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Subsea 7 Limited v. Subsea Offshore

Case No. D2023-2532

1. The Parties

Complainant is Subsea 7 Limited, United Kingdom, represented by Keltie LLP, United Kingdom.

Respondent is Subsea Offshore, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name <subsea7-offshore.com> (the “Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2023. On connection with the Domain Name. On June 12, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Reactivation Period) and contact information in the Complaint. The Center sent an email communication to Complainant on June 14, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 14, 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 13, 2023.

The Center appointed Marina Perraki as the sole panelist in this matter on July 19, 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

Complainant renders seabed-to-surface engineering construction as well as contractor services to the offshore energy industry.

Complainant owns, inter alia, the following trademark registrations for SUBSEA 7:

- United Kingdom Trade Mark Registration (series) No. UK00002304950, SUBSEA 7 (word), filed on
July 10, 2002, and registered on April 21, 2006, for goods in international class 7 and services in
international classes 37, 39 and 42;

- European Union Trade Mark Registration No. 011426335, SUBSEA 7 (word), filed on December 14, 2012, and registered on May 13, 2013, for goods in international class 7 and services in international classes 37, 39 and 42; and

- International Registration No. 1147789, SUBSEA 7 (word), registered on December 14, 2012, for
goods in international class 7 and services in international classes 37, 39 and 42.

The Domain Name was registered on October 5, 2022 and leads to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which Complainant must satisfy with respect to the Domain
Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s SUBSEA 7 trademark in its entirety. This is sufficient to establish confusing similarity.

The Domain Name incorporates the said trademark of Complainant in its entirety with the addition of the word “offishore” and a hyphen. The Panel finds that the trademark is recognizable in the Domain Name (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section
1.7).

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The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii)       Respondent (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii)      Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with
respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain
Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant has demonstrated, the Domain Name resolves to an inactive website.

Notwithstanding Respondent’s name, there is no evidence that Respondent has been commonly known by the Domain Name.

Moreover, the composition of the Domain Name carries a risk of implied affiliation with Complainant, as the addition of the term “offshore” clearly describes Complainant’s business.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Respondent has not provided any evidence to rebut the prima facie case established by Complainant that

Respondent does not have rights or legitimate interests in the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

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(i)        circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. registration. The Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba WhoIs Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).

Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable
through a simple browser search (see Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517;
Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462. Moreover, the Domain

Name is inherently misleading.

The Panel notes that the Domain Name currently leads to an inactive website. The non-use of a domain
name does not prevent a finding of bad faith under the circumstances of this proceeding (See Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section

3.3).

Under these circumstances and on this record, the Panel finds that Respondent registered and is using the

Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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 Domain Name <subsea7-offshore.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: August 2, 2023