Decision for dispute CAC-UDRP-108818

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the European Union trademark registrations for ESYOIL (the “ESYOIL trademark”) with registration No. 005234166, registered on 5 December 2007 for goods and services in International Classes 4, 9, 11, 20, 35, 37, 38, 39 and 42.

The Complainant operates a German online portal for heating-oil prices comparison and deliveries under the ESYOIL brand. The portal is available at the domain name <esyoil.com>, registered since 28 February 2000.

The disputed domain name was registered on March 26, 2026. It currently resolves to a German-language online shop with the title “Esy-Oil I Heizöl günstig kaufen I Online Preisrechner” (in English, “Esy-Oil I Buy Cheap Heating Oil I Online Price Calculator”). The website imitates the Complainant’s website at https://www.esyoil.com/ and offers competing services for heating-oil price comparison and deliveries. The website displays a fake “Trusted Shops” rating of 4.75 at https://esy-oil.com/trustedshops, which cannot be found on the official Trusted Shops website at https://www.trustedshops.de/.  

The Respondent’s website at the disputed domain name is listed as a fraudulent shop on the website of the consumer protection organisation Watchlist Internet at https://www.watchlistinternetat/liste-betruegerischer-shops/shop/esy-oilconn/.

COMPLAINANT: 

The Complainant states that the disputed domain name is confusingly similar to its ESYOIL trademark, because it incorporates the trademark in its entirety and is phonetically identical and visually near-identical to it, differing only by the insertion of a hyphen between “esy” and “oil”. According to the Complainant, the insertion of the hyphen is a classic example of typosquatting, and the content of the website at the disputed domain name demonstrates that the confusing similarity was intended by the Respondent.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Complainant has never authorised it to use the ESYOIL trademark or to register any domain name incorporating it, and the Respondent is not commonly known by the disputed domain name. According to the Complainant, the use of the disputed domain name for a fraudulent shop that impersonates the Complainant and takes advance payments from consumers for goods that are never delivered can never confer rights or legitimate interests; it is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 

The Complainant contends that the disputed domain name was registered and is being used in bad faith. It points out that the disputed domain name was registered almost twenty years after the Complainant’s trademark. The Complainant notes that the targeting of German-speaking heating-oil customers, which represent the Complainant’s clients, demonstrates that the Respondent registered the disputed domain name with knowledge of the Complainant and its trademark. The Complainant points out that the use of the disputed domain name to operate a fraudulent fake shop is manifest bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant submits that it has issued a number of abuse notices to the Respondent, following which the operator of the disputed domain name repeatedly rotated its infrastructure to evade enforcement through concealment behind Cloudflare proxy services and changes of hosting providers.

RESPONDENT:

The Respondent did not submit a Response in this proceeding.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The language of the Registration Agreement for the disputed domain name is Russian.  Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English.  The Complainant requests that the language of the proceeding be English.  In support of its request, the Complainant states that the disputed domain name is in Latin script and consists of the Complainant’s ESYOIL trademark, and requiring the Complainant, a German company, to litigate in Russian would impose a disproportionate burden, while the Respondent has demonstrated, through its German-language website, its ability to operate in Western European languages.

The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the Complainant’s language request.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Select UDRP Questions (“WIPO Overview 3.1”), section 4.5.1).

Having considered the above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

Having resolved the above issue, the Panel is satisfied that all procedural requirements under UDRP have been met and that there is no reason why it would be inappropriate to issue a decision on the substance of the dispute.

Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:

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

(iii) the respondent has registered and is using the domain name in bad faith. 

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 3.1, section 1.7.

The Complainant has shown rights in respect of the ESYOIL trademark for the purposes of the Policy. WIPO Overview 3.1, section 1.2.1.

The Panel finds the ESYOIL trademark is easily recognisable within the disputed domain name, because it incorporates the trademark, only adding a hyphen between “easy” and “oil”, and this addition does not preclude a finding of confusing similarity with the Complainant’s trademark. This satisfies the Panel that the disputed domain name is confusingly similar to the ESYOIL trademark for the purposes of the Policy. WIPO Overview 3.1, sections 1.7 and 1.8.

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

Rights and 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 recognised that proving that 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 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 3.1, section 2.1.

Having reviewed the available record, the Panel finds 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 disputed domain name is confusingly similar to the Complainant’s trademark and to its <esyoil.com> domain name, which creates a risk of implied affiliation with the Complainant. WIPO Overview 3.1, section 2.5.1. The disputed domain name is being used for a website that copies the design of the Complainant’s website and offers the same services in competition with the Complainant on the same market in Germany, while displaying a fake Trusted Shops score. As noted by the Complainant, the Respondent’s website is listed as a fraudulent shop by Watchlist Internet. The Respondent has not provided any plausible explanation for its actions in connection with the disputed domain name.

In view of the above, the Panel finds that the Respondent has registered and used the disputed domain name in an attempt to exploit the reputation of the Complainant’s ESYOIL trademark to mislead and attract visitors to its website and to promote its own business competing with the Complainant. Such conduct cannot give rise to rights or legitimate interests in the disputed domain name.

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

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 Respondent registered the disputed domain name many years after the Complainant established its reputation and registered its trademark, and it is confusingly similar to this trademark and to the Complainant’s official domain name. The Respondent has associated the disputed domain name to a website that copied the design of the Complainant’s website and offered to visitors the same services as the Complainant, falsely claiming to have a Trusted Shops rating of 4.75. The Respondent’s website is listed as a fraudulent shop by Watchlist Internet.

In the absence of any allegations or evidence suggesting otherwise, the above leads the Panel to the conclusion that by registering and 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 with the Complainant’s ESYOIL trademark as to the source of the Respondent’s website and of the services offered on it. This supports a conclusion that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.

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