Union Oil Company of California, d/b/a Unocal v. Thanh Nguyen
Claim Number: FA0204000110802
Complainant is Union Oil Company of California, d/b/a Unocal, Brea, CA (“Complainant”). Respondent is Thanh Nguyen, Westminster, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unocal76.com>, registered with Iholdings.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 24, 2002; the Forum received a hard copy of the Complaint on April 29, 2002.
On April 29, 2002, Iholdings.com, Inc. confirmed by e-mail to the Forum that the domain name <unocal76.com> is registered with Iholdings.com, Inc. and that Respondent is the current registrant of the name. Iholdings.com, Inc. has verified that Respondent is bound by the Iholdings.com, 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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
The <unocal76.com> domain name is identical to Complainant’s UNOCAL 76 mark. Respondent has no rights or legitimate interests in the <unocal76.com> domain name.
Respondent registered the <unocal76.com> domain name in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant holds registered trademarks for UNOCAL 76 for the following goods and services: automobile and truck service station services (Reg. No. 1,407,063); vehicle tires and tubes (Reg. No. 1,372,413); air filters, gasoline filters and oil filters for automotive vehicles (Reg. No. 1,373,670); and electric storage batteries and battery cables (Reg. No. 1,371,105).
Respondent acquired the <unocal76.com> domain name by purchasing it on an eBay auction listing. In subsequent conversions via email with Complainant, Respondent offered to sell <unocal76.com> for over $5,000. In the email correspondence, Respondent noted that the website to which <unocal76.com> resolves receives a lot of hits because Internet users think it is Complainant’s website.
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 as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 has established in this proceeding that it has rights to the UNOCAL 76 mark through registration with the United States Patent and Trademark Office as well as through continuous subsequent use. Respondent’s <unocal76.com> domain name incorporates Complainant’s entire mark. The only difference between Respondent’s domain name and Complainant’s mark is that there is no space between “UNOCAL” and “76” in Respondent’s domain name. However, the absence of a space in a domain name is inconsequential since spaces are not allowed. Therefore, the domain name registered by Respondent, <unocal76.com>, is identical to Complainant’s UNOCAL 76 mark, pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent purchased the <unocal76.com> domain name on eBay and thereafter offered the domain name for sale to Complainant for more than $5,000. Offering an infringing domain name for sale does not constitute use in connection with a bona fide offering of goods or services. Also, Respondent has made no active use of the <unocal76.com> domain name. Therefore, Respondent does not have rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).
No evidence in this record shows that Respondent is commonly know by UNOCAL76 or <unocal76.com> pursuant to Policy ¶ 4(c)(ii) and Respondent has not offered such evidence. Respondent is known to this Panel as Thanh Nguyen. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name where Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s aforementioned sales offer to Complainant of the <unocal76.com> domain permits a finding of bad faith under Policy ¶ 4(b)(i) because Respondent offered to sell the domain name for an amount that may be presumed to be in excess of out-of-pocket costs (a price of over $5,000). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); see also 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).
When Respondent bought the <unocal76.com> domain name, the eBay listing notified potential buyers that the domain name previously belonged to Complainant. In addition, the eBay listing notified Respondent by disclaimer that any purchaser might get sued by Complainant. Moreover, Complainant’s UNOCAL 76 mark is an internationally well-known mark. Therefore, Respondent had notice of Complainant’s rights upon acquiring the domain name; this also permits a finding of bad faith. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Since Respondent was notified that Complainant previously owned the <unocal76.com> domain name, Respondent’s subsequent registration of the domain name is further evidence of bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of the Complainant’s failure to renew a domain name).
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 the requested relief should be hereby granted.
Accordingly, it is Ordered that the <unocal76.com> domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 21, 2002.
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