Chevron Intellectual Property LLC v. St Kitts Registry
Claim Number: FA0709001080702
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 St Kitts Registry (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <chevrontexcocards.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2007.
On September 28, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <chevrontexcocards.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 October 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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@chevrontexcocards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant offers a wide range of products and services, including gasoline, lubricants, operating service stations, lubrication services, and, importantly for the dispute at hand, credit card services.
Complainant and its predecessors-in-interest have used the TEXACO mark without interruption since 1903, and registered the mark with the United States Patent and Trademark Office (“USPTO”) on December 4, 1906 (Reg. No. 57,902).
Complainant has also used the CHEVRON mark without interruption since 1935, and registered the mark with the USPTO on February 14, 1939 (Reg. No. 364,683).
Further, for several years following the merger of Chevron Corporation and Texaco Inc., Complainant has used the CHEVRONTEXACO trademark, registered on June 24, 2003 (Reg. No. 2,729,246).
Since 2003,
Complainant has owned and operated a web site for its credit card services at
the domain name <chevrontexacocards.com>.
Complainant has neither licensed nor otherwise authorized Respondent to use the registered CHEVRONTEXACO mark.
Respondent registered the disputed <chevrontexcocards.com> domain name on October 20, 2005.
Respondent is not commonly known by the disputed domain name.
The disputed domain name is being used for commercial gain by displaying a series of click-through links for credit card and related services.
Respondent’s <chevrontexcocards.com> domain name is confusingly similar to Complainant’s TEXACO, CHEVRON, and CHEVRONTEXACO marks.
Respondent does not have any rights or legitimate interests in the domain name <chevrontexcocards.com>.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
There is no dispute that Complainant registered the CHEVRONTEXACO mark with the USPTO, as alleged. It has therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). See 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <chevrontexcocards.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). Respondent’s evidently deliberate misspelling of Complainant’s mark insufficiently distinguishes the disputed domain name. Further, the addition of the generic term “cards” to the domain name does not distinguish the disputed domain name from Complainant’s mark because Complainant owns the nearly identical <chevrontexacocards.com> domain name, which includes that generic term. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). See also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business).
Moreover, by including the generic top-level domain name (“gTLD”) “.com”, in its domain name, Respondent has not distinguished the disputed domain because all domain names are required to have a top-level domain. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003):
The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges, and Respondent does not deny, that Complainant has neither licensed nor otherwise authorized Respondent to use the registered CHEVRONTEXACO mark. Complainant must first present a prima facie case establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has met this initial burden, the burden shifts to Respondent to show that it nonetheless has 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 a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Complainant has
shown prima facie that Respondent
lacks rights and legitimate interests in the contested domain name, and has
thus satisfied Policy ¶ 4(a)(ii). Because Respondent failed to answer
the Complaint, we may presume that Respondent lacks rights and legitimate
interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). However, we will nonetheless examine the available evidence to determine if there is any basis for determining that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name and has neither authorized nor licensed Respondent to use its mark in any way. Further, the pertinent WHOIS information offers no indication that Respondent has been or is currently known by the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the <chevrontexcocards.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark).
In addition, we note that there is no dispute that Respondent’s
website displays click-through links for credit card and related services which
presumably provide commercial gain to Respondent. Respondent thus benefits from the likely
confusion between Complainant’s nearly identical <chevrontexacocard.com>
domain name and the disputed domain name.
From this we conclude that such use of the disputed domain name does not
constitute a bona fide offering or
goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
See also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003): “Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has shown that Respondent is using the <chevrontexcocards.com> domain name
to operate a website that features links to competing commercial websites
offering products in competition with the business of Complainant. Moreover, it is evident that Respondent uses
the <chevrontexcocards.com>
domain name to collect click-through fees for each misdirected Internet user
referred to a competing website. Such
use is likely to cause confusion among Internet users as to Complainant’s possible
sponsorship of or affiliation with the resulting website. Respondent’s attempt to capitalize on this
confusion for its commercial gain is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling
Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003): “Respondent has attempted to commercially benefit from
the misleading <qwestwirless.com> domain name by linking the domain name
to adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).” See also Am. Univ. v. Cook, FA 208629 (Nat.
Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates
another's mark with the intent to deceive Internet users in regard to the
source or affiliation of the domain name is evidence of bad faith.
In addition, it appears that Respondent registered the <chevrontexcocards.com> domain name with at least constructive knowledge of
Complainant’s rights in the trademark CHEVRONTEXACO by virtue of Complainant’s prior registration of that
mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain
name despite such constructive knowledge is, without more, evidence of bad
faith registration and use of the domain name pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <chevrontexcocards.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2007
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