Union Oil Company of California, d/b/a
Unocal v. Thanh Nguyen
Claim Number: FA0204000110802
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@unocal76.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
FINDINGS
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.
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 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.
DECISION
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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