Chevron Intellectual Property LLC v. Zhichao Yang
Claim Number: FA2009001913700
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Matthew Snider of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrontexcaocreditcards.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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 25, 2020; the Forum received payment on September 25, 2020.
On September 27, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <chevrontexcaocreditcards.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 October 6, 2020, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of October 26, 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@chevrontexcaocreditcards.com. Also on October 6, 2020, the Chinese 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 30, 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 CHEVRON and TEXACO marks acquired through its ownership of its international portfolio of trademark registrations described below and its rights at common law acquired through its long and extensive use of the marks in its integrated energy business.
Complainant submits that it adopted “Chevron” as its corporate name in the 1970’s and its CHEVRON trademark has been used dating back to 1935. It asserts that together with its parent company, Complainant has become one of the world's leading integrated energy enterprises with a global workforce of over 50,000 company employees and 3,500 service station employees.
Complainant asserts that it has a significant presence in North America, its world headquarters in California, major corporate offices in Texas, Pennsylvania, and Louisiana, and operates refineries in California, Utah and Mississippi.
Complainant adds that it, and its predecessors-in-interest have continuously used the TEXACO mark since 1903 to offer petroleum products, such as automotive gasoline (and kerosene at the time) lubricants, and related services. Complainant asserts that it invests in advertising and promotional materials for the TEXACO mark at a cost of tens of millions of dollars per year. In 2006, the Oil Price Information Service (OPIS) released a report ranking the TEXACO brand the second most powerful brand among gasoline retailers.
Complainant submits that the disputed domain name is confusingly similar to both its CHEVRON and TEXACO marks as it merely incorporates the CHEVRON and TEXACO marks (as an intentional misspelling of the TEXACO mark) adding the generic terms “credit cards.”
Complainant argues that given the fame of the CHEVRON and TEXACO marks and their dominance in the disputed domain name viewed as a whole, this addition and slight misspelling does not distinguish the disputed domain name from the CHEVRON or TEXACO marks. See Chevron Intellectual Property LLC v. Zhichao Yang, FA1909410 (Forum Sept. 24, 2020) (finding the <chevrontexaocards.com> and similar domain names confusingly similar to Complainant’s CHEVRON and TEXACO marks because the domain names merely add “the generic term ‘card’ or ‘business card’ (or an intentional misspelling of those terms and the “.com” generic top-level domain (‘gTLD’) [and …] the addition of a generic term and a gTLD to a mark is insufficient to distinguish the disputed domain name from that mark under Policy 4(a)(i).”).
Complainant adds that the insufficiency of non-distinctive terms to distinguish a domain name from a mark is particularly apparent where, as here, the added terms - “credit cards”– are related to aspects of Complainant’s business and thus the terms suggest a connection to Complainant because that is a direct reference to Complainant. See Chevron Intellectual Property LLC v. Ancelet Dept / Ancelet, FA1582869 (Forum Nov. 14, 2014) (Panel found “that the addition of terms related to the CHEVRON mark, such as “gas” or “fuel” amplify confusing similarity…”).
Additionally, Complainant submits that the generic Top Level Domain (“gTLD”) extension <.com> is irrelevant for purposes of assessing confusing similarity under the Policy. See Google LLC v. Chen Weilong, FA1803596 (Forum Sept. 24, 2018) (“Further, the ‘.com’ or ‘.net’ gTLD are typically disregarded in the confusing similarity analysis as these gTLDs rarely add any substantive meaning to a domain name.”).
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 or TEXACO marks in the Whois record or otherwise.
Furthermore Complainant states that neither Respondent, nor the links or commercial offerings listed on the websites resolving from the disputed domain name, are affiliated with, associated with, or otherwise endorsed by Complainant and argues that unlicensed, unauthorized use of a domain name that incorporates a complainant’s trademarks is strong evidence that a respondent has no rights or legitimate interest in the domain name. See 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.”).
Referring to a screenshot of the website to which the disputed domain name resolves which has been annexed to the Complaint, 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. Respondent’s website features Complainant’s CHEVRON and TEXACO (as an intentional misspelling thereof) marks and a series of pay-per-click links that redirect Internet users to the commercial offerings of unrelated third parties that compete with Complainant’s business.
Complainant submits that references to Complainant’s business on Respondent’s website, including but not limited to “Credit Card”, “Credit”, etc. are obvious attempts by Respondent to pass itself off as being related to Complainant.
Complainant also submits that Respondent’s pay-per-click links and advertisements are clearly intended to generate “click-through” revenue for Respondent’s financial gain by misleading and diverting Internet users who are otherwise seeking to engage with Complainant online.
Complainant adds that in previous proceedings, panels have held that the present Respondent did not engage in “a bona fide offering of goods or services or a legitimate noncommercial or fair use” of previously registered domain names (<chevrontaxacogiftcard.com>, <chevrontexacoggiftcard.com>, <chevrontexacogiftgard.com>, <chevrontexacogoftcard.com>, <chevrontexaocards.com>, <chevrontxacocards.com>, etc.) that are nearly identical to the disputed domain name at issue. See both Chevron Intellectual Property LLC v. Zhichao Yang, FA1899809 (Forum July 14, 2020) and Chevron Intellectual Property LLC v. Zhichao Yang, FA1909410 (Forum Sept. 24, 2020).
Complainant alleges that the disputed domain name was registered in bad faith, arguing that Respondent is undoubtedly familiar with and attempting to trade off of the goodwill established by Complainant in the CHEVRON and TEXACO marks, as evidenced by: (i) the extensive use, media coverage and fame of the CHEVRON and TEXACO marks, (ii) Complainant’s worldwide trademark filings, (iii) Respondent’s registration of a Domain Name that entirely incorporates the CHEVRON and TEXACO marks (as an intentional misspelling thereof), (iv) Respondent’s use of the CHEVRON and TEXACO (as an intentional misspelling thereof) marks on the website resolving from the Domain Name, and (v) Respondent’s use of pay-per-click links that feature commercial offerings that compete with Complainant’s business.
Complainant adds that there is no rationale for use and registration of the disputed domain name other than to disrupt the business of Complainant by causing internet users to think they are accessing links to websites sponsored by Complainant; or attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CHEVRON or TEXACO marks.
Complainant further submits that the CHEVRON and TEXACO marks in the disputed domain name implies that the domain name and associated website is connected with, if not owned by, Complainant, which it is not. This implication is reinforced because Complainant owns the domain names <chevrontexacocards.com>, <chevrontexactocreditcards.com>, and <chevrontexacocreditcard.com>.
Complainant adds that Respondent has engaged in a pattern of bad faith registration of marks. See Chevron Intellectual Property LLC v. Zhichao Yang, FA1899809 (Forum July 14, 2020); Chevron Intellectual Property LLC v. Zhichao Yang, FA1909410 (Forum Sept. 24, 2020); Caterpillar Inc. v. Zhichao Yang, FA1882877 (Forum Mar. 14, 2020); Transamerica Corporation v. Zhichao Yang, FA1866186 (Forum Nov. 6, 2019); TD Ameritrade IP Company, Inc. v. Zhichao Yang, FA1541053 (Forum Mar. 20, 2014).
Complainant also alleges that the present case is a clear instance of Respondent typosquatting on Complainant’s trademarks, demonstrating bad faith and that Respondent has attempted to commercially benefit off of Complainant’s marks in bad faith.
In conclusion Complainant submits that Respondent’s calculated use of the disputed domain name strongly suggests that Respondent seeks to attract Internet users to its online location by intentionally creating confusion as to whether the resolving page is offered by or affiliated with the Complainant. See W.W. Grainger, Inc. v. Millikan, FA1512400 (Forum Sept. 4, 2013).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an integrated energy company, carrying on an international business using both the CHEVRON and TEXACO marks for which it owns a large international portfolio of registered trademarks among the earliest of which include:
· United States registered trademark CHEVRON, registration number 0364683, registered on February 14, 1939, presently on the Principal Register for goods in international class 4;
· United States registered trademark TEXACO, registration number 0057902, registered on October 9, 1906, presently on the Principal Register for goods in international class 4.
Complainant has an established Internet presence including on its principal website at https://chevron.com/ on which it markets its services inter alia CHEVRON, TEXACO and CALTEX credit cards and gift cards.
The disputed domain name was registered on September 10, 2020 and resolves to a website with pay-per-click links to third party commercial offerings.
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 request by the Forum for verification of details of the registration of the disputed domain name which disclosed the identity of Respondent, as registrant. Respondent avails of a privacy service to conceal his identity on the published WhoIs.
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 evidence to prove that it has rights in the CHEVRON and TEXACO marks acquired through its ownership of its international portfolio of trademark registrations described below and its rights at common law acquired through its long and extensive use of the marks in its integrated energy business.
Complainant’s uncontested evidence is that it adopted “Chevron” as its corporate name in the 1970’s; its CHEVRON trademark has been used continuously dating back to 1935; that together with its parent company, Complainant has become one of the world's leading integrated energy enterprises with a global workforce of over 50,000 company employees and 3,500 service station employees; and that it has a significant presence in North America, its world headquarters in California, major corporate offices in Texas, Pennsylvania, and Louisiana, and operates refineries in California, Utah and Mississippi.
Complainant’s uncontested evidence is furthermore that that its TEXACO mark has been continuously used since 1903 and in 2006, the Oil Price Information Service (OPIS) released a report ranking the TEXACO brand the second most powerful brand among gasoline retailers.
The disputed domain name <chevrontexcaocreditcards.com> consists of the CHEVRON mark, the element “texcao”, the words “credit” and “cards” and the gTLD <.com>.
Complainant’s mark CHEVRON is the initial and a distinctive element of the disputed domain name. The element “texcao” in context is a misspelling of the TEXACO mark and, as such, has a distinctive character.
The term “credit cards” is generic and descriptive adding no distinguishing character to the domain name and the gTLD extension <.com> would be perceived as Internet users as a necessary technical requirement for a domain name and therefore should be ignored for the purposes of comparison.
As Complainant’s CHEVRON and TEXACO marks are the only distinctive elements of the disputed domain name, this Panel finds that the disputed domain name is confusingly similar to the CHEVRON and TEXACO marks in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy Paragraph 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting
· that on information and belief, Respondent is not commonly known by the disputed domain name or any name containing the CHEVRON or TEXACO marks;
· that the Whois record does not list Respondent as known by the disputed domain name;
· that the disputed domain name is not owned or controlled by Complainant and prior panels have found that a respondent is not commonly known by a disputed domain name where no evidence in the record indicates that the respondent is known by the domain name and has not been by Complainant to use its mark in a domain name;
· that Complainant has not authorized, consented to, or approved Respondent to register or use the disputed domain name, or Complainant’s marks;
· that neither Respondent nor the links or commercial offerings listed on the website to which the disputed domain name resolves are affiliated with, associated with, or otherwise endorsed by Complainant;
· 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, but instead the disputed domain name resolves to a website that features its CHEVRON mark and an intentional misspelling of its TEXACO mark with a series of pay-per-click links that redirect Internet users to the commercial offerings of unrelated third parties that compete with Complainant’s business;
· that previous panels have held that the use of a disputed domain name in connection with a parked webpage, for the purpose of promoting hyperlink advertisements to Complainant’s goods or services or its competitor’s goods and services, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii);
· that Respondent has been the unsuccessful respondent in a number of previous proceedings under the Policy identified above where the panels held that he was not using those domain names for a bona fide or noncommercial purpose;
· that Respondent’s use of the disputed domain name cannot be considered a fair use of the term “Chevron” or “Texaco” because Respondent’s use of the domain name is not connected to dictionary definitions and is instead directly targeted to the Complainant’s name and business.
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).
This Panel finds that the disputed domain name itself illustrates that the registrant was familiar with Complainant, its business, its CHEVRON mark and its TEXACO mark when the disputed domain name was registered.
It is implausible that the registrant was unaware of such well known marks. It is even more implausible that the disputed domain name that incorporates the both marks, albeit a misspelling of TEXACO accidentally.
This Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant’s marks in mind in order to take predatory advantage of Complainant, its business, its goodwill and reputation in its name and marks.
Respondent has caused, permitted or allowed the disputed domain name to resolve to a website with links to third party sites. On the balance of probabilities Respondent is profiting from pay-per-click revenue from these links.
This Panel agrees with Complainant that on the balance of probabilities Respondent is engaged in a calculated use of the disputed domain name in bad faith, seeking to attract Internet users to its online location by intentionally creating confusion as to whether the resolving page is offered by or affiliated with the Complainant.
In reaching this decision this Panel finds support in the fact that Respondent has been the unsuccessful respondent in a number of previous cases referred to by Complainant.
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 <chevrontexcaocreditcards.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: October 30, 2020
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