Phillips 66 Company v. Eli Pooley / Melissa Testa
Claim Number: FA1910001868811
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Eli Pooley / Melissa Testa (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <contractorsp66.com> and <contractorpp66.com> registered with Google LLC; PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2019; the Forum received payment on October 29, 2019.
On October 29, 2019, Google LLC; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <contractorsp66.com> and <contractorpp66.com> domain names are registered with Google LLC; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Google LLC; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Google LLC; PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@contractorsp66.com, postmaster@contractorpp66.com. Also on November 1, 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 November 22, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in PHILLIPS 66 and the stylized number,66. Complainant holds national registrations for those trademarks. Complainant submits that the domain names are confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by the same names; and the domain names have not been used other than for a nefarious purpose. In particular, Complainant asserts that Respondent has used the disputed domains “as part of a sophisticated and opportunistic scheme to impersonate Complainant’s employees and attempt to defraud Complainant’s customer out of a significant sum of money.”
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the PHILLIPS 66 and 66 marks in connection with its business in the worldwide manufacture, marketing, distribution, and sale of petroleum products;
2. the disputed domain names were both registered in September 2019; and
3. the domain names do not resolve to active websites but have been used to send emails which pose as having originated from Complainant.
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."
Preliminary Procedural Issue: Multiple Respondents
As originally filed, the Complaint named two respondents, Contact Privacy Inc. Customer 1245427345 and Melissa Testa. The Forum wrote to Complainant on October 30, 2019 stating that a review of the Complaint had identified a deficiency which required amendment of the Complaint “to properly identify the Respondent and its contact information, using the Registrar’s email Verifications (both attached) for reference. In consequence, Complainant filed an Amended Complaint within the time prescribed under the Rules identifying respondents as
Eli Pooley and Melissa Testa.
Rule 1 provides that “[t]he Holder of a Domain Name Registration” means the single person or entity listed in the WHOIS registration information at the time of commencement. In this case, the disputed domain names are listed to separate holders. The Forum’s Supplemental Rules 1 and 4(c) provide that if a complainant wishes to make an argument for a single respondent having multiple aliases it must present that argument in the complaint for the Panel’s consideration. Here, Complainant states that Eli Pooley is the name of an actual employee of Complainant, holding the position of Financial Analyst. Her corporate email address is partly composed of the shorthand expression “p66”, as for that matter the Panel notes, is the email address of the nominated contact person at Complainant company identified in the Complaint. Complainant asserts that:
“Respondent infiltrated an email exchange between Complainant’s customer and Complaint’s Financial Analyst Eli Pooley, and sent an email to Complainant’s customer from the email address Eli.Pooley@contractorsp66.com posing as Complainant’s Financial Analyst. ... The Respondent also used the Complainant’s company name and mark “Phillips 66 Limited” in its email signature block in the same manner as Complainant’s employees. After an exchange, the Respondent directed the customer to remit payment of outstanding invoices to a bank account in Mexico that is not affiliated with Complainant ... [Later], likely fearing that the email addresses incorporating the domain name contractorsp66.com had been blocked or identified as fraudulent by the customer, sent the customer another follow-up email from the email address eli.pooley@contractorpp66.com continuing to pose as Complaint’s Financial Analyst Eli Pooley.
Complainant believes the domain names contractorsp66.com and contractorpp66.com are under common control and owned by one Respondent. Both domain names were created in September 2019, and the domain names differ by only a single letter. … The domain name contractorpp66.com was also registered on the same day that the Respondent appears to have feared that Complainant’s customer realized that the prior emails sent by the Respondent using email addresses incorporating the domain name contractorsp66.com may be fraudulent. … Thus, in view of the fact that email addresses using each of the disputed domain names were involved in the same fraudulent transaction, the domains differ by only a single letter, the domains were created only 15 days apart, and the listed registrant of contractorsp66.com appears to be a clear alias, Complainant believes there is strong evidence that the domains names are under common control and owned by one Respondent.”
The WIPO Jurisprudential Overview 3.0 states at paragraph 4.11.2 that where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. It notes that Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate. Those listed factors include “any changes by the respondent … following communications regarding the disputed domain name(s) and any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s).
In the circumstances as outlined above, the Panel finds that in all likelihood the two domain names at issue are under the control of a single person or entity and so for the purposes of application of this Policy regards the named Respondents as aliases of a single party.
Substantive Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademarks with the USPTO, a national trademark authority.
The Complaint then states that the disputed domain names are “confusingly similar to Complainant’s Phillips 66 Marks”, where it had previously defined those marks as several USPTO registrations for the trademark, 66, and PHILLIPS 66 in plain and stylized forms.
Complainant states that the domain names use:
“Complainant’s 66 trademark — a famous mark strongly associated with Complainant — and simply add the letter “p” to reference Complainant’s famous PHILLIPS 66 mark.”
Further, Complainant states that it:
“… is the registrant of the domain name www.p66.com. For over a decade Complainant has maintained this domain, and Complainant has used p66.com for its corporate email addresses since 2012. Complainant’s employees are assigned an email address account using the p66.com domain as their primary communication resource and for work purposes, and Complainant has established numerous general-purpose email accounts using the p66.com domain (such as lubricants@p66.com and investorrelations@p66.com. Complainant’s use of email addresses containing the p66.com domain is known to the public and referenced in Complainant’s marketing materials.
In summary, the argument is that (a) the trademark 66 is famous; (b) the trademark PHILLIPS 66 is famous; (c) use of the letter “p” and, in this case, “pp”, references the PHILLIPS 66 trademark, because (d) since 2012 the registration of a domain name and the use of email addresses both entailing the integer “p66” are known to the public.
For the purposes of comparison of the disputed domain names with the trademarks the gTLD, “.com”, can be disregarded. So, too, the Panel finds that the generic word “contractor(s)” is of low distinguishing value. That said, the Panel rejects out of hand the submission that <contractorsp66.com> and <contractorpp66.com> are confusingly similar to the trademark PHILLIPS 66. Nor is it immediately clear that the terms <contractorsp66.com> and <contractorpp66.com> are confusingly similarity to the 66. There is no evidence accompanying the Complaint to support the assertion that 66 (or PHILLIPS 66) is a famous trademark and so there is nothing to elevate the importance or significance attaching to the numeral “66” when used in the terms <contractorsp66.com> and <contractorpp66.com>. The Panel finds that neither domain name is confusingly similar to the trademark, 66.
Further, there is no proof of a trademark registration for “p66” and there is no claim that it has the status of a common law trademark. What is claimed is that the domain name <p66.com> is “known to the public”. That knowledge is said to come from registration and maintenance of the domain name and its use as part of the email addresses for Complainant’s employees and products.
The registration of a domain name corresponding with a trademark will of itself do nothing to assist its recognition as a common law mark. On the other hand, if a website resolving from the domain name is well-visited and well-known then evidence of those facts may go towards proof of common law rights in a trading name corresponding with the domain name. The Panel has uncovered that the domain name <p66.com> was created in 2004. Complainant is its owner. However, the Panel has also discovered that there is no active website at www.p66.com. Accordingly, there is nothing to show that “p66” is known to the public in this way.
The corporate email address use is of slight interest. Much of the email communication will be internal between Complainant’s staff but it is claimed that “Complainant has established numerous general-purpose email accounts using the p66.com domain (such as lubricants@p66.com and investorrelations@p66.com) and those addresses appear in Complainant’s marketing materials. The Panel notes that none of that material accompanies the Complaint.
This is the high tide mark of Complainant’s assertion that “p66” is known to the public. Needless to say, it falls short of proof that “p66” acts as a common law trademark.
What remains which merits consideration are the citations relied upon by Complainant where it has been involved in earlier UDRP disputes. Those decisions are footnoted hereunder, directly as set out in the Complaint.[i] Cases involving domain names such as <philips66.co> offer little instruction to the Panel in this case. However, it is noted that in Phillips 66 Company v. ghy, FA 1832449 the panelist wrote that “[t]he disputed domain name <p66.pw> incorporates Complainant's stylized 66 mark and corresponds to an abbreviated form of Complainant's famous PHILLIPS 66 mark…”. Although decisions under the UDRP do not follow a system of strict precedent, appropriate weight should be given to factual findings of earlier panels where the circumstances justify it. Another panelist, earlier this year, has found not only that PHILLIPS 66 is famous, but that “p66” is an abbreviated form of that mark, presumably one recognized as such.
On the basis of that earlier decision this Panel is prepared to infer that “p66” has some life as an unregistered trademark recognized by the public. Following the finding, above, that the word “contractor(s)” is generic, the Panel finds that the disputed domain names are confusingly similar to “p66”, a mark in which Complainant has rights.
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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) you (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) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The names of Respondents do not in any way indicate that they might be commonly known by the domain names. There is no evidence that Respondents have any trademark rights. Complainant states that there is no association between the parties. Further, the use of the domain names as already described is clearly in bad faith and cannot give rise to any rights or legitimate interests (see, for example, Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). interests within the meaning of the Policy.”).
A prima facie case has been made. The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel observes that the application of any of those scenarios is, on the facts, less appropriate than the simple findings that the disputed domain names were registered in bad faith and then used in bad faith. Complainant and its trademarks were obviously targeted. The registrations were made in bad faith. Further, Respondent’s use of the disputed domain names as described to perpetrate a fraud is manifestly bad faith use (see, for example, Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <contractorsp66.com> and <contractorpp66.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 24, 2019
[i]See, e.g. Phillips 66 Company v. ghy, FA 1832449 (Forum April 4, 2019) (“The disputed domain name <p66.pw> incorporates Complainant's stylized 66 mark and corresponds to an abbreviated form of Complainant's famous PHILLIPS 66 mark, with the addition of the ‘.pw’ top-level domain. These variations do not substantially diminish the similarity between the domain name and Complainant's marks”); Phillips 66 Company v. Cimpress Schweiz GmbH (“Respondent has chosen to take Complainant’s 66 trademark and to use it in its domain name [P-66.com], adding only a hyphen and the letter “p” that do not negate the confusing similarity with Complainant’s trademark); Phillips 66 Company v. Jon Hopkins, FA 1662572 (Forum March 22, 2016) (“The <philips66.co> domain name contains Complainant’s entire PHILLIPS 66 trademark less an “l” and less its space, with the country code top-level domain name “.co” appended to the resulting string. The removal of the “l” and space between the terms in Complainant mark and the addition of the country code top level domain name do not distinguish the at-issue domain name from the Complainant’s trademark for the purposes of the Policy”); Phillips 66 Company v. Tim Taylor (“Respondent’s <philips66.org> domain name contains Complainant’s entire PHILLIPS 66 trademark less an “l” and less its space, with the top-level domain name “.org” appended to the resulting string. The removal of the “l” and space between the terms in Complainant’s mark and the addition of the top-level domain name do not distinguish the at-issue domain name from the Complainant’s trademark for the purposes of the Policy”).
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