Exxon Mobil Corporation v. Maxim Domin
Claim Number: FA1908001856159
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Maxim Domin (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxonmobilerewardsplus.net>, registered with Porkbun LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 7, 2019; the Forum received payment on August 7, 2019.
On August 7, 2019, Porkbun LLC confirmed by e-mail to the Forum that the <exxonmobilerewardsplus.net> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@exxonmobilerewardsplus.net. Also on August 9, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is the world’s largest publicly traded international oil and gas company. Complainant has rights in the EXXON MOBIL REWARDS+ mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,651,537, registered Jan. 8, 2019). See Compl. Ex. E. Respondent’s <exxonmobilerewardsplus.net> is confusing similar to Complainant’s mark as Respondent merely using the term “plus” rather than “+” and adding an “e” to “Mobil,” along with the “.net” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <exxonmobilerewardsplus.net> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant. Additionally, Respondent is using the disputed domain name for a phishing scheme.
Respondent registered and used the <exxonmobilerewardsplus.net> domain name in bad faith. Respondent is attempting to attract, for commercial gain, users to the disputed domain name by passing off as Complainant. Additionally, Respondent is using the disputed domain name for a phishing scheme. Finally, Respondent had actual knowledge of Complainant’s rights in its mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the world’s largest publicly traded international oil and gas company.
2. Complainant has established its trademark rights in the EXXON MOBIL REWARDS+ mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,651,537, registered Jan. 8, 2019).
3. Respondent registered the<exxonmobilerewardsplus.net> domain name on April 2, 2019.
4. Respondent has used the domain name to attempt to pass itself off as Complainant and Respondent is also using the domain name for a phishing scheme.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the EXXON MOBIL REWARDS+ mark through its registration of the mark with the USPTO (e.g., Reg. No. 5,651,537, registered Jan. 8, 2019). See Compl. Ex. E. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the EXXON MOBIL REWARDS+ mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EXXON MOBIL REWARDS+ mark.
Complainant argues Respondent’s <exxonmobilerewardsplus.net> is confusingly similar to Complainant’s mark as Respondent is merely using the term “Plus” rather than “+” and adding an “e” to “Mobil”, along with the “.net” gTLD. The mere removal of the letter “e” and adding a gTLD to a mark may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Additionally, the replacement of a symbol prohibited in a domain name with its phonetic form may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent’s <russellandbromley.com> domain name identical to complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”). Therefore the Panel finds Respondent’s <exxonmobilerewardsplus.net> is confusing similar to Complainant’s EXXON MOBIL REWARDS+ mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EXXON MOBIL REWARDS+ trademark and to use it in its domain name, merely using the term “Plus” rather than “+” and adding an “e” to “Mobil”, that does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <exxonmobilerewardsplus.net> domain name on April 2, 2019;
(c) Respondent has used the domain name to attempt to pass itself off as Complainant and Respondent is also using the domain name for a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <exxonmobilerewardsplus.net> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Maxim Domin” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <exxonmobilerewardsplus.net> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <exxonmobilerewardsplus.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to pass itself off as Complainant. Use of a disputed domain name to deceive Internet users into believing an affiliation exists between the respondent and complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Here, Complainant provides a screenshot of the <exxonmobilerewardsplus.net> domain name’s resolving webpage, showing various uses of Complainant’s EXXON MOBIL REWARDS+ and EXXON MOBIL marks throughout the webpage. See Compl. Ex. F. Therefore, the Panel finds Respondent fails to use the <exxonmobilerewardsplus.net> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues Respondent has no rights or legitimate interests in the <exxonmobilerewardsplus.net> domain name as Respondent is using the disputed domain name in a phishing scheme. Use of a disputed domain name to phish for Internet users personal or financial information may not establish rights or legitimate interests under Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Here, Complainant provides a screenshot of a third party website purported to examine if a domain name is a threat for phishing, showing that the disputed domain name is a potential phishing threat. See Compl. Ex. F. Therefore the Panel finds that Respondent has no rights or legitimate interests in the <exxonmobilerewardsplus.net> domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and used the <exxonmobilerewardsplus.net> domain name in bad faith, as Respondent is attempting to attract Internet users for commercial gain. Registration and use of a disputed domain name to deceive Internet users into believing an affiliation exists between the respondent and complainant for commercial gain can be evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here Complainant provides a screenshot of the <exxonmobilerewardsplus.net> domain name’s resolving webpage, showing various uses of Complainant’s mark throughout the webpage that is aimed to sell Internet users gasoline reward cards. See Compl. Ex. F. Therefore the Panel finds Respondent registered and used the <exxonmobilerewardsplus.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent registered and used the <exxonmobilerewardsplus.net> domain name in bad faith, as Respondent is using the disputed domain name for a phishing scheme. Registration and use of a disputed domain name to phish for Internet users' personal or financial information can be evidence of bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provides a screenshot of a third party website purporting to examine if a domain name is a threat for phishing, showing that the disputed domain name is a potential phishing threat. See Compl. Ex. F. Therefore the Panel finds Respondent registered and used the <exxonmobilerewardsplus.net> domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the EXXON MOBIL REWARDS+ mark at the time of registering the <exxonmobilerewardsplus.net> domain name. The Panel has discretion to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. See Compl. Ex. F. As such, the Panel determines that Respondent had actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the EXXON MOBIL REWARDS+ mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonmobilerewardsplus.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 4, 2019
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