Chevron Intellectual Property LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin
Claim Number: FA0709001080422
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred
W. Hathaway, of Buchanan Ingersoll & Rooney PC, 1737
King Street, Suite 500, Alexandria, VA 22314. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain
Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <texacochevroncards.com>, registered with Fabulous.com Pty 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 1, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 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@texacochevroncards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <texacochevroncards.com> domain name is confusingly similar to Complainant’s CHEVRONTEXACO mark.
2. Respondent does not have any rights or legitimate interests in the <texacochevroncards.com> domain name.
3. Respondent registered and used the <texacochevroncards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chevron Intellectual Property LLC, offers a
wide range of products and services, including gasoline, lubricants, operating
service stations and credit card services.
Pursuant to the furtherance of its commercial interests, Complainant has
registered several trade and service marks with the United States Patent and
Trademark Office (“USPTO”) including the CHEVRONTEXACO mark (Reg. No. 2,729,246
issued
Respondent registered the <texacochevroncards.com>
domain name on
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.
Complainant asserts rights in the CHEVRONTEXACO mark through registration of the mark with the USPTO. The Panel finds that Complainant’s timely registration of the CHEVRONTEXACO mark sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office established the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Respondent’s <texacochevroncards.com>
domain name inverts the two words of Complainant’s CHEVRONTEXACO mark, adds the
generic term “cards,” which obviously relates to Complainant’s credit card
business, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the mere inversion of
Complainant’s protected mark, combined with the addition of a generic term and
a gTLD fails to sufficiently distinguish the domain name from the mark pursuant
to Policy ¶ 4(a)(i).
See Playboy Enters. v. Movie Name Co.,
D2001-1201 (WIPO
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant has made a prima facie case in support of its
allegations, the burden shifts to Respondent to set forth concrete evidence
indicating that it has rights or legitimate interests in accordance with Policy
¶ 4(a)(ii). See
SEMCO Prods., LLC v. dmg world media (
Respondent’s disputed domain name resolves to a website
where links to other, competing commercial websites are offered to Internet
users. The Panel therefore finds that
Respondent’s use is neither a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb.
Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with 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)); see also Royal Bank of Scot. Group plc v. Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the
operation of a commercial web directory displaying various links to third-party
websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees
for each consumer it redirected to other websites).
According to Respondent’s
WHOIS registration information, the registant of the <texacochevroncards.com>
domain name is “Privacy Ltd. Disclosed Agent for YOLAFT c/o Domain Admin.” Absent the existence on the record of any
substantive countervailing evidence, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum
Sept. 21, 2006) (finding that the respondent is not commonly known by the
<shoredurometer.com> or <shoredurometers.com> domain names where
the WHOIS information indicates the registrant of the domain names as “Andrew
Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence
suggests that the respondent is commonly known by the domain names); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As indicated above, Respondent’s disputed domain name
resolves to a website offering links to competing credit card websites. The Panel therefore finds that Respondent’s
use amounts to a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See
Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a website containing commercial links to the websites
of the complainant’s competitors represented bad faith registration and use
under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors).
Presumably, Respondent procures considerable financial remuneration from its diversionary use of the <texacochevroncards.com> domain name via the use of click-through advertising fees. Additionally, unsophisticated Internet users may become confused as to the source and affiliation of the resulting material on the website associated with Respondent’s <texacochevroncards.com> domain name. The Panel therefore finds that Respondent’s use evinces registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texacochevroncards.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 6, 2007
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