Chevron Intellectual Property LLC v. Vanshita sharma / Ms
Claim Number: FA2009001912067
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Matthew J. Snider of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Vanshita sharma / Ms (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texacooilandgas.com>, registered with NameCheap, 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 September 11, 2020; the Forum received payment on September 11, 2020.
On September 14, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <texacooilandgas.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2020 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@texacooilandgas.com. Also on September 21, 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 16, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the TEXACO mark acquired through its portfolio of trademark registrations described below and the goodwill and reputation it has established in the mark through continuous and extensive use by Complainant and its predecessors-in-interest since it was first adopted in 1903.
Complainant asserts that it has a very active internet presence. In this regard Complainant refers to a screenshot of its official website at <texaco.com> which has been adduced in an annex to the Complaint. Complainant adds that as part of its commercial activities its invests in advertising and promotional materials, at a cost of tens of millions of dollars each year.
Complainant submits that the disputed domain name is confusingly similar to its TEXACO mark as it incorporates the mark in its entirety which it argues in itself is sufficient. Citing PepsiCo. Inc. v. PEPSI SRL, D2003-0696 (WIPO Oct. 28, 2003) (holding pepsimanager.com, pepsisail.com, and others confusingly similar to complainant’s PEPSI mark since they “incorporate[ed the] trademark in its entirety”).
Complainant argues that the addition of the generic terms “oil” and “gas” with the conjunctive “and” to Complainant’s mark is insufficient to distinguish the domain name from the mark.
Complainant further submits that the addition of these descriptive elements suggests a connection to Complainant because that is a direct reference to Complainant’s business. Citing Morgan Stanley v. Eugene Sykorsky / private person, FA1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis).
Complainant 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 TEXACO mark, as shown in the WhoIs record of the disputed domain name registration.
Complainant asserts that it has not authorized, consented to, or approved Respondent to register or use the disputed domain name.
It adds that Respondent is using the disputed domain name to perpetrate a fraudulent scheme.
Complainant further argues that unlicensed, unauthorized use of a domain 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., Fair Isaac Corp. v. Michele, FA1486147 (Forum Mar. 30, 2013) (“Respondent could not have developed any rights in the FICO [m]ark, unless Complainant licensed the FICO mark to Respondent or otherwise allowed Respondent to use it.”).
Complainant asserts that Respondent is not employed by or affiliated with Complainant or its related companies; nor is Respondent authorized by Complainant or its related companies to carry out business under any name containing “Texaco” (or any other mark owned or used by Complainant) or to hold itself out as being related to Complainant or Complainant’s related companies in any way.
Complainant adds that Respondent also is not authorized to conduct any business, including any hiring or advertising, on Complainant’s behalf or Complainant’s related companies’ behalf.
Furthermore, Complainant asserts that Respondent is not authorized by Complainant or its related companies to carry out any business under the disputed domain name or to incorporate the TEXACO marks or name in any website that may potentially resolve from the disputed domain name.
Referring to screenshots of Complainant’s own website and the website to which the disputed domain name resolves, Complainant alleges that Respondent’s website mimics and in fact replicates Complainant’s own website. For example the “About – Texaco Oil and Gas Services” page of Respondent’s website copies verbatim the first few paragraphs of the historical narrative found on the “About Texaco” webpage from the <texaco.com> website.
Complainant argues that panels have frequently found that using a confusingly similar domain name to resolve to a website that aims at replicating a complainant’s website, as in this case, does not establish rights or legitimate interests in a domain name. See Chevron Intellectual Property LLC v. Buchi Anderson / Guiness, FA1570792 (Forum Aug. 26, 2014) (finding Respondent had no rights to or legitimate interest in the disputed domain name where the Respondent’s <chevronoilandgas.com> domain name resolved to a website that advertised “Chevron Nigeria Limited Open Jobs” as part of a website that mimicked Complainant’s official website
Furthermore, Complainant argues that using a disputed domain name to promote and advertise its own services under the guise that it is complainant in an attempt to pass off and/or offer competing goods or services is not a bona fide offering of goods or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA0655014 (Forum Apr. 25, 2006) (finding respondent’s attempt to pass itself of[f] as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
Complainant further alleges that Respondent has used the disputed domain name to create an email account which it is using to send fraudulent emails in a scheme calculated to induce third parties to send personal or sensitive information to Respondent under false pretenses. Complainant alleges that Respondent is misusing Complainant’s famous TEXACO mark to add recognition and credibility to Respondent’s fraudulent schemes by creating a false connection with Complainant which Complainant argues constitutes strong evidence that Respondent lacks rights or legitimate interests. See Coldwell Banker Real Estate LLC v. piperleffler piperleffer / null, FA1529565 (Forum Dec. 27, 2013) (finding respondent’s use of the disputed domain name in an email address to pass itself off as the complainant online did not amount to a bona fide use or legitimate noncommercial or fair use of the domain name).
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing that, given the fame, extensive use and media coverage of Complainant’s TEXACO mark, Respondent must have had actual knowledge of the mark when the disputed domain name was registered. See Chevron Intellectual Property LLC v. Tim Bruce, FA1544867 (Forum Mar. 26, 2014) (“Respondent had actual knowledge of Complainant’s rights in the TEXACO mark at the time it registered the at-issue domain name …. Respondent’s prior knowledge is clear from the notoriety of Complainant’s TEXACO trademark and the fact that the <texaco-oil-us.com> domain name combines the renowned TEXACO mark with terms suggestive of Complainant’s business.”).
In an annex to the Complaint, Complainant submitted screenshots of its own website and the website to which the disputed domain name resolves which mimics Complainant’s official website. Complainant submits that the screenshots illustrate that Respondent has mimicked the look of Complainant’s official website by using Complainant’s trademarks, identical textual elements and Complainant’s logos. Complainant submits that this conclusively shows that Respondent is using the disputed domain name in bad faith. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA0894477 (Forum Mar. 8, 2007) (respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant furthermore argues that these exhibits prove that Respondent has been intentionally and fraudulently holding itself out as affiliated with Complainant through direct references and links to Complainant and its business on the website and is thereby commercially benefitting from Complainant’s marks in bad faith. See Charter Communications Holding Company, LLC v. Ammar v. Saleem, FA1814320 (Forum Nov. 29, 2018) (finding that Respondent attempted to commercially benefit off Complainant’s mark in bad faith by confusing internet users into believing that Respondent’s website is licensed or affiliated with Complainant).
Complainant separately refers to copies of emails sent from the <texacooilandgas.com> account. The email exchange took place at the end of July and early August 2020, which are exhibited in an annex to the Complaint as amended. In these emails, Respondent falsely masquerades as a representative of Complainant’s TEXACO business, engaging with an unsuspecting innocent third party in a fraudulent scheme and pass itself off as Complainant. The third party was deceived into believing that Respondent was making a legitimate and authentic employment-related solicitation and encouraged to disclose personal information to Respondent. Complainant argues that Respondent is therefore using Complainant’s famous TEXACO mark to add recognition and credibility to Respondent’s fraudulent schemes by creating a false connection with Complainant.
Finally, Complainant argues that where a domain name is “so obviously connected with such a well-known name and products […] its very use by someone with no connection with the product suggests opportunistic bad faith.” Parfums Christian Dior v. Javier Garcia Quintas, D2000-0226 (WIPO May 17, 2000).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an integrated energy company and is the owner of the TEXACO trademark for which it owns a large portfolio of registrations across the world including India where Respondent is located, the oldest of which is
United States registered trademark TEXACO, registration number 57, 906, registered by Complainant’s predecessor in title on December 4,1906, currently registered in Complainant’s name on the Principal Register for goods in international class 4.
Complainant has an established Internet presence and maintains and operates a website to which its domain name <Texaco.com> resolves on which it offers information about its TEXACO-branded products and related services.
The disputed domain name was registered on May 17, 2020 and is being used both as a website to impersonate Complainant and for an email account to perpetrate a phishing scam.
There is no information available about Respondent except for that provided in the Complaint as amended, the Registrar’s WhoIs and the information provided by the Registrar in response to the request from the Forum to provide the registration details of the disputed domain name in the course of this proceeding.
Respondent availed of a privacy service to conceal her identity which was disclosed by the Registrar in response to the Forum’s request.
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 uncontested convincing evidence of its ownership of rights in the TEXACO mark acquired through its portfolio of trademark registrations and its extensive use of the TEXACO mark in its energy business.
The disputed domain name consists of Complainant’s TEXACO mark together with the words “oil” and “gas” with the conjunctive term “and” in combination with the gTLD <.com> extension.
Complainant’s TEXACO mark is the dominant and only distinctive element in the disputed domain name. The words “oil” and “gas” are descriptive and generic words and neither the conjunction “and” nor the gTLD <.com> extension add any distinguishing character to the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the TEXACO 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 advancing the arguments:
· that on information and belief Respondent is not commonly known by the disputed domain name or any name containing the TEXACO mark;
· that Complainant has not authorized, consented to, or approved Respondent to register or use the disputed domain name;
· that Respondent is not employed by or affiliated with Complainant or its related companies;
· that Respondent is not authorized by Complainant or its related companies to carry out business under any name containing TEXACO or to hold itself out as being related to Complainant or Complainant’s related companies in any way;
· that Respondent is not authorized to conduct any business, including any hiring or advertising, on Complainant’s behalf or Complainant’s related companies’ behalf;
· that Respondent is using the disputed domain name to resolve to a website that mimics and replicates Complainant’s official web site, inter alia using Complainant’s name and mark without consent of Complainant;
· that Respondent has sent emails, letters and application forms to third parties from an e-mail account associated with the disputed domain name impersonating Complainant;
· that the use of the disputed domain name in a fraudulent email scheme, impersonating Complainant, misleading innocent third parties;
· that Respondent’s use of the disputed domain name is not a bona fide offering of goods or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
It is well established that if a complainant makes out a prima facie case, the burden of production shifts to respondent to prove her 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).
It is most improbable that the registrant of the disputed domain name was unaware of the TEXACO mark when the disputed domain name was registered.
The mark TEXACO is distinctive, widely known and extensively used. The fact that the registrant of the disputed domain name incorporated the mark in combination with the words “oil” and “gas “demonstrates an awareness of the disputed domain name and must lead to the finding that the disputed domain name was registered in bad faith in order to take predatory advantage of the mark.
Complainant has adduced uncontested, credible evidence that Respondent is using the disputed domain name as the address of a website purporting to impersonate Complainant by using its mark, logos and name creating the impression among the public that it is owned by, connected with, or endorsed by Complainant. The “About – Texaco Oil and Gas Services” page of Respondent’s website copies verbatim the first few paragraphs of the historical narrative found on the “Our Star is Born” webpage on Complainant’s website at the <texaco.com> address.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of her web site and is therefore using the disputed domain name in bad faith.
Additionally, Complainant has adduced convincing uncontested evidence that Respondent has used the disputed domain name to establish an email account from which Respondent is sending messages in a fraudulent scam endeavoring to mislead an unsuspecting candidate for employment into disclosing personal information which is further evidence of bad faith
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and 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 <texacooilandgas.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 17, 2020
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