national arbitration forum

 

DECISION

 

Exxon Mobil Corporation v. Property Management Professional

Claim Number:  FA0708001059655

 

PARTIES

Complainant is Exxon Mobil Corporation (“Complainant”), represented by Stephen P. Meleen, of Pirkey Barber LLP, 600 Congress Avenue, Suite 2120, Austin, TX 78701.  Respondent is Property Management Professional (“Respondent”), Bijeondong 842, Pyeongtaek, GY 450150, Republic of Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <exxon.biz>, registered with Blue Razor Domains, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 10, 2007.

 

On August 9, 2007, Blue Razor Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxon.biz> domain name is registered with Blue Razor Domains, Inc. and that Respondent is the current registrant of the name.  Blue Razor Domains, Inc. has verified that Respondent is bound by the Blue Razor Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On August 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@exxon.biz by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <exxon.biz> domain name is identical to Complainant’s EXXON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <exxon.biz> domain name.

 

3.      Respondent registered and used the <exxon.biz> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Exxon Mobile Corporation, has continuously used the EXXON mark since 1967in connection with a variety of goods and services related to energy, petroleum and chemical products and research, and credit card and convenience store services.  Complainant has registered the mark in numerous jurisdictions worldwide, including in the United States with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 884,419 issued January 20, 1970) and in the Republic of Korea (Reg. No. 709 issued March 19, 1998).

 

Respondent’s <exxon.biz> domain name was registered on May 30, 2004.  Respondent emailed Complainant in early 2006 claiming ownership of the <exxon.biz> domain name and inquiring about its transfer.  Complainant immediately requested Respondent transfer the disputed domain whereupon Respondent demanded the sum of $1,000 to complete the transfer.  Until recently, the disputed domain name redirected traffic to competitors of Complainant.  Currently, the website that resolves from the <exxon.biz> domain name features links to websites that advertise and/or offer goods and services in competition with those offered under Complainant’s EXXON mark. 

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has sufficiently established its rights under Policy ¶ 4(a)(i) in the EXXON mark through registration with the USPTO and in the Republic of Korea.  See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

The <exxon.biz> domain name features Complainant’s EXXON mark in its entirety and includes the generic top level domain (“gTLD”) “.biz.”  It is well established that a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis.  Consequently, the Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).   

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must initially make out a prima facie case that Respondent has no rights and legitimate interests in the domain name at issue.  See VeriSign Inc. Vene Sign, C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent’s default, however, does not lead to an automatic ruling for Complainant.  Complainant still must establish a prima facie case showing that under the Uniform Domain Name Disputed Resolution Policy it is entitled to a transfer of the domain name.”).  The Panel finds that Complainant has met this burden and accordingly, the burden is shifted to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).

 

Respondent has failed to submit a response to the Complaint.  The Panel thus presumes that Respondent has no rights or legitimate interests in the <exxon.biz> domain name, but will still consider all available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

Nowhere in Respondent’s WHOIS information does it indicate that Respondent is commonly known by the <exxon.biz> domain name.  There is also no other information in the record to indicate that Respondent is or ever has been known by the disputed domain name.  Further, Respondent has not sought, nor has Complainant granted, a license or permission to use Complainant’s mark in any way.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

The <exxon.biz> domain name is identical to Complainant’s EXXON mark and the Respondent features no business of its own on the disputed domain name.  Moreover, because the website that resolves from the <exxon.biz> domain name has previously diverted and now displays links to competitors of Complainant, the Panel presumes Complainant is financially benefiting from such use.  The Panel finds that such use does not constitute a bona fide offering of goods or service or a noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii) respectively.  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is 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) because the registrant presumably receives compensation for each misdirected Internet user).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent emailed Complainant in early 2006 claiming ownership of the <exxon.biz> domain name and inquiring about its transfer.  Complainant immediately requested Respondent transfer the disputed domain whereupon Respondent demanded the sum of $1,000 to complete the transfer.  The Panel finds that Respondent’s offer to sell the disputed domain name for an amount that exceeds its out-of-pocket expenses evidences that Respondent registered and is using the <exxon.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(i).  See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900).

 

Until recently, the disputed domain name redirected traffic to competitors of Complainant.  Currently, the website that resolves from the  <exxon.biz> domain name features links to other websites that advertise and/or offer goods and services in competition with those offered under Complainant’s EXXON mark.  The Panel finds this to be additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The website that resolves from the disputed domain name currently displays links to third-party websites that advertise and/or offer goods and services in competition with Complainant’s business.  This is presumed to financially benefit Respondent through the use of click-through-fees.  As such, the Panel finds further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <exxon.biz> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

________________________________

Honorable Paul A Dorf (Ret.), Panelist

Dated:  September 25, 2007

 

 

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