Chevron Intellectual Property LLC v. Syed Hussain / IBN7 Media Group
Claim Number: FA2008001909791
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Syed Hussain / IBN7 Media Group (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevronnoble.com>, registered with Name.com, Inc.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 24, 2020; the Forum received payment on August 24, 2020.
On August 31, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <chevronnoble.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 8, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’ registration as technical, administrative, and billing contacts, and to postmaster@chevronnoble.com. Also on September 8, 2020, 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 October 2, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it has rights in the CHEVRON trademark established through its ownership of the portfolio of registered trademarks described below and its use of the mark in its integrated energy business.
Complainant submits that it has a significant goodwill in the CHEVRON mark; that it adopted “CHEVRON” as its corporate name in the 1970’s and its CHEVRON trademark dates back to 1935. Complainant asserts that it has a significant presence in North America, with its world headquarters in California. It also has corporate offices in Texas, Pennsylvania, and Louisiana, with a global workforce of over 50,000 company employees and 3,500 service station employees and operates refineries in California, Utah and Mississippi.
Complainant adds that as a result of extensive use and advertising since 1935, CHEVRON has become a “famous mark” under U.S. and international trademark law as recognized by the panel in Chevron Corp. v. Fenton, FA0096465 (Forum Mar.1, 2001).
Complainant submits that the disputed domain name is nearly identical to its CHEVRON trademark arguing that the disputed domain name fully incorporates the CHEVRON mark and this by itself establishes that it is confusingly similar to Complainant’s mark. PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003)(holding pepsimanager.com, pepsisail.com, and others confusingly similar to the complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant adds that its CHEVRON mark is the dominant element of the disputed domain name and adds that the disputed domain name was registered on the same day that Complainant announced its acquisition of an enterprise known as NOBLE ENERGY.
Complainant argues that the disputed domain name is a direct reference to both Complainant’s mark and NOBLE ENERGY and submits that under similar circumstances, panels have had no difficulty in finding confusing similarity. For example, in Bloomberg Finance L.P. v. Sunny Bhadauria, FA1786429 (Forum June 7, 2018) (finding <bloombergquint.org> confusingly similar to the BLOOMBERG mark because the domain name incorporated the “mark in its entirety, with only the addition of the term “quint” which was a reference to Complainant’s Indian business partner, ”Quintillian Media”).
Complainant adds that the combination of Complainant’s mark and the mark owned by an entity operating in the same commercial sector as Complainant creates a confusing similarity between the disputed domain name and the CHEVRON mark. See, e.g., Capital One Financial Corporation v. Ai Aziz, FA1285597 (Forum Nov. 4, 2009) (finding the <capitalonemastercard.com> domain name confusingly similar to the CAPITAL ONE mark because the respondent merely added to the CAPITAL ONE mark the mark – MASTERCARD - of a third-party that operates in the same financial sector).
Complainant adds that the fact that the disputed domain name is composed of two registered trademarks owned by entities operating in the same commercial sector does not obviate the confusing similarity between the domain name and a complainant’s mark. See Target Brands, Inc. v. Nathan Lytlepinhey, FA1657101 (Forum Feb. 29, 2016) (“[w]hen a domain name contains two registered trademarks … that domain name is deemed confusingly similar to the trademarks at issue.”).
Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com> is irrelevant for purposes of the Policy. See, e.g., Guess? IP Holder L.P., FA1769716 (Forum Mar. 8, 2018) (noting that every domain name requires a top-level domain).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that on information and belief Respondent is not commonly known by the disputed domain name or any name containing the CHEVRON marks. Respondent is not identified by the disputed domain name or the CHEVRON mark on the WhoIs record.
Complainant asserts that it has not authorized, consented to, or approved Respondent to register or use the disputed domain name or Complainant’s marks and argues that such unlicensed, unauthorized use of a domain name that incorporates a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in the domain name. See, e.g., Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA1076561 (Forum Oct. 26, 2007); Fair Isaac Corp. v. Michele, FA1486147 (Forum Mar. 30, 2013) (“Respondent could not have developed any rights in the FICO [m]ark, unless Complainant.
Complainant further argues that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or any legitimate non-commercial or fair use.
Referring to a screenshot of the webpage to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant submits that Respondent uses the disputed domain name to resolve to a website that offers the disputed domain name for public sale at a price clearly in excess of any reasonable out of pocket expenses for the disputed domain name incurred by Respondent. Complainant argues that Respondent’s attempts to sell the confusingly similar disputed domain name for a sum certainly well in excess of any registration and maintenance costs for Respondent’s undeveloped domain name constitutes further evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See 3M Company v. Kabir S Rawat, FA1725052 (Forum May 9, 2017) (“a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Complainant concludes by arguing that inactive use of a domain name or the passive holding of the disputed domain name “permits the inference that [the respondent] lacks rights and legitimate interest in the domain name.” Michelin North America, Inc. v. Energie Media Group, FA451882 (Forum Aug. 7, 2012).
Complainant alleges that the disputed domain name was registered in bad faith. arguing that although, the disputed domain name has only been registered since July 20, 2020, it is clear that Respondent has no intention of making active use of the disputed domain name because, upon registering the disputed domain name, Respondent immediately listed it for sale.
Complainant also alleges that the disputed domain name is being used in bad faith. Respondent’s instant registration of the disputed domain name on the same day of Complainant’s announcement of its acquisition of NOBLE ENERGY strongly suggests that Respondent had actual knowledge of Complainant’s mark, and recognized the value of the disputed domain name to Complainant, and as such opportunistically engaged in bad faith registration. See Amazon.com, Inc., Amazon Technologies, Inc. v. Paul James, WIPO Case No. D2014-1847 (WIPO Dec. 19, 2014) (“a close time correlation” between the registration date of disputed domain names and a related announcement by a complainant “cannot reasonably be considered to be coincidental or serendipitous”).
Complainant argues that therefore Respondent’s offer for public sale of the disputed domain name in the amount of $2,750.00 demonstrates that Respondent is attempting to sell the disputed domain name in considerable excess of out-of-pocket costs, and strongly suggests bad faith registration and use. See e.g., loanDepot.com, LLC v. Expired domain caught by auction winner,***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA1786281 (Forum June 8, 2018) (Panel found Respondent’s offer of disputed domain name for sale for $950 was “no doubt above its out-of-pocket costs” and constituting bad faith).
Complainant concludes that Respondent fails to actively use the disputed domain name, which is evidence of bad faith registration and use. VideoLink, Inc. v. Xantech Corporation, FA1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of an integrated energy business based in the USA and is the owner of a large portfolio of registered trademark registrations for the CHEVRON trademark, the earliest of which is United States Registered Trademark CHEVRON, registration number 364,683, registered on February 14, 1939, which is registered on the Principal Register for goods in international class 4.
Complainant has an established Internet presence and its principal website upon which it markets its goods and services is at <https://www.chevron.com>.
The disputed domain name <chevronnoble.com> was registered on July 20,2020 which was the date on which Complainant announced the acquisition of another enterprise in the energy sector NOBLE ENERGY and resolves to a website on which it is offered for sale for USD$2,750.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name. The Registrar disclosed the name and contact details of Respondent as the registrant of disputed domain name had availed of a privacy service to conceal its identity.
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”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the CHEVRON trademark established through its ownership of the portfolio of registered trademarks described below and the goodwill that it has acquired through use of the mark in its integrated energy business.
The disputed domain name consists of Complainant’s CHEVRON trademark, the word “noble” and the gTLD <.com> extension.
Complainant’ CHEVRON mark is the initial and dominant element of the disputed domain name. The word “noble” in itself would normally add no distinguishing character to the disputed domain name, however in the present case the registration brings with it a reference to a recently acquired subsidiary of Complainant viz. NOBLE ENERGY.
In the circumstances of this case the gTLD <.com> extension may be disregarded under the first element confusing similarity test, as it a standard requirement for registration.
Also in the circumstances of this case, the fact that the disputed domain name is comprised of two registered trademarks owned by entities operating in the same commercial sector does not obviate the confusing similarity between the domain name and a complainant’s mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the CHEVRON trademark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that on information and belief Respondent is not commonly known by the disputed domain name or any name containing the CHEVRON marks;
· that Respondent is not identified by the disputed domain name or the CHEVRON mark on the WhoIs record or otherwise;
· that Complainant has not authorized, consented to, or approved Respondent to register or use the disputed domain name or Complainant’s marks;
· that where a domain name at issue incorporates a complainant’s trademark it is strong evidence that a respondent has no rights or legitimate interest in the domain name;
· that Respondent uses the disputed domain name to resolve to a website that offers the disputed domain name for public sale at a price clearly in excess of any reasonable out of pocket expenses for the disputed domain name incurred by Respondent which Complainant submits does not constitute use in connection with any bona fide offering of goods or services or any legitimate non-commercial or fair use;
· that inactive use of a domain name or the passive holding of the disputed domain name permits the inference that Respondent lacks rights and legitimate interest in the domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence on record shows that it is implausible that the disputed domain name was registered without knowledge of Complainant, its rights and its mark or that it was registered for any benign reason. The disputed domain name on the same day of Complainant’s announcement of its acquisition of NOBLE ENERGY strongly suggests that Respondent had actual knowledge of Complainant, its CHEVRON mark as well as the name and trademark of the target entity in the acquisition viz. NOBLE ENERGY. In such circumstances, this Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant, its trademark and goodwill in both the CHEVRON mark and the goodwill of the target entity and was motivated by the publicity generated by the acquisition.
The fact that Respondent immediately registered the disputed domain name on the same day as the public announcement of Complainant’s acquisition of NOBLE ENERGY and immediately offered the hybrid domain name for sale for USD$2,750.00 shows that the disputed domain name was registered in bad faith in order to be sold for a sum in excess of the registrant’s out of pocket expenses.
This Panel finds therefore that on the balance of probabilities, the disputed domain name was registered or acquired by Respondent for the primary purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the CHEVRON mark or to a competitor of Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronnoble.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 3, 2020
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