Chevron Intellectual Property LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2207002005830
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <checron.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2022; the Forum received payment on July 26, 2022.
On July 28, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <checron.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the GoDaddy.com, 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 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2022, 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@checron.com. Also on August 2, 2022, 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 August 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 Chevron Corporation is the parent of the wholly owned subsidiary Chevron Intellectual Property LLC (collectively “Complainant), which together is one of the world's leading integrated energy companies with a global workforce of over 50,000 company employees and 3,500 service station employees. Complainant maintains a significant presence in North America, with its world headquarters in California, United States.
Complainant has rights in the CHEVRON trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration. No. 364,683, registered on February 14, 1939), among others. Complainant also owns International Trademark Registrations for CHEVRON with protection extending into over 40 countries under the Madrid Protocol and also owns active national registrations for CHEVRON in over 100 jurisdictions worldwide, some of which date back to 1982. Such registrations include, but are not limited to, trademark registrations in Panama, where the Respondent allegedly resides, and which registrations date back to at least 1947.
The aforementioned trademarks will hereinafter collectively be referred to as the “CHEVRON Mark”.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s CHEVRON Mark because it incorporates the CHEVRON Mark in its entirety, replaces the letter “v” with the letter “c”, and adds the “.com” generic top-level domain (“gTLD”).
Moreover, Complainant claims that Respondent has no legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized, licensed or otherwise permitted Respondent to use the CHEVRON mark. Additionally, Complaint contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a rotating series of webpages that includes Complainant’s own webpage, a webpage displaying pay-per-click competing hyperlinks, and a webpage displaying malware. Respondent also uses the disputed domain name to engage in typosquatting.
In addition, Respondent in this proceeding has been the subject of numerous past UDRP cases in which panels ordered the transfer of disputed domain names containing the trademarks of complainants, such conduct being evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).
Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name to disrupt Complainant’s business and divert customers for commercial gain. Further, Respondent registered the disputed domain name to participate in typosquatting, and Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHEVRON Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the CHEVRON Mark based on its trademark registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s CHEVRON Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the CHEVRON Mark as set forth below.
Complainant asserts rights in the CHEVRON mark based upon the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 364,683, registered on February 14, 1939) and other trademark registrations in jurisdictions worldwide. Registration of a mark with multiple trademark offices internationally is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the CHEVRON mark with the USPTO and other trademark offices, the Panel finds that the Complainant has rights in the CHEVRON Mark under Policy 4(a)(i).
Here, the disputed domain name consists of a misspelling[i] of the CHEVRON Mark, substituting the letter “v” with the letter “c”, and then followed by the gTLD “.com“. Registration of a domain name that substitutes one letter for another in a trademark (especially when the two letters are adjacent on a keyboard, as here) does not distinguish the disputed domain name from the mark per Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (changing a single letter is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, adding a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent misspells Complainant’s CHEVRON Mark by substituting the letter “v” with the letter “c” in “chevron” to create “checron”. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the CHEVRON Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized, licensed or otherwise allowed Respondent to use its CHEVRON Mark in the disputed domain name. The Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to a rotating series of webpages displaying links related to the goods and services associated with Complainant and its competitors, as well as malware. Where Respondent uses a domain to redirect users to competing services, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”); Here, Complainant provides evidence of the disputed domain name resolving to webpages displaying pay-per-click third party sponsored links as well as malware. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by substituting the letter “v” with the letter “c” in “chevron” (resulting in “checron”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Third, the fame of the CHEVRON Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the CHEVRON Mark, and thus, constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of Complainant or its CHEVRON Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Fourth, the Panel concludes that Respondent registered and is using the <checron.com> disputed domain name for bad faith disruption of Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Finally, Respondent has engaged in a long-standing pattern of cybersquatting in registering multiple domains that infringe on the trademarks of other brand owners. Such cases demonstrate that Respondent has engaged in an extensive pattern of conduct designed to infringe upon the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, and demonstrates bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010).
Specifically, Respondent in this case has been found by prior UDRP Panels in numerous instances (200+ Forum cases) of engaging in a pattern of bad faith domain name registration. Where a respondent has been subject to multiple UDRP proceedings, as here, bad faith registration and use is indicated.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <checron.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: August 31, 2022
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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