Exxon Mobil Corporation v. Stephen Nurwono
Claim Number: FA0204000112532
Complainant is Exxon Mobil Corporation, Irving, TX (“Complainant”) represented by Laura D. Robertson, of Fulbright & Jaworski LLP. Respondent is Stephen Nurwono, Cerritos, CA (“Respondent”).
The domain name at issue is <mobil.biz>, registered with R&K Global Business 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 27, 2002; the Forum received a hard copy of the Complaint on April 28, 2002.
On May 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 23, 2002.
Complainant’s Additional Submission was received and determined to be complete on May 28, 2002.
On June 6, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tyrus R. Atkinson, Jr., as the single Panelist.
Transfer of the domain name from Respondent to Complainant.
ExxonMobil Oil Corporation (hereinafter “EMOC”), a wholly owned subsidiary of the Complainant, Exxon Mobil Corporation (hereinafter “Complainant”) owns the mark MOBIL. EMOC has licensed the right to use these marks to Complainant.
The domain name <mobil.biz> is identical to EMOC’s marks for which Complainant has a license.
Respondent has no rights or legitimate interest in the domain name <mobil.biz>. Respondent does not own a trademark registration for the mark MOBIL. Additionally, Respondent is not known by the name MOBIL, and he does not operate a business or other organization under the name of MOBIL. Further, Respondent has made no demonstrable preparations to use the domain name <mobil.biz> in connection with a bona fide offering of goods or services.
Respondent registered the domain name <mobil.biz> in bad faith. Complainant’s MOBIL mark is famous. It is used worldwide by both Complainant and its wholly owned subsidiary to identify a variety of products and a variety of services.
When Respondent applied to register the <mobil.biz> domain name, it warranted to its Registrar that registration of the <mobil.biz> domain name would not infringe upon or otherwise violate the rights of a third party. Because the mark MOBIL is famous and the subject of numerous U.S. trademark registrations, Respondent either knew or should have known by virtue of the constructive notice provided by the registrations, that Complainant had rights in the MOBIL mark.
The Respondent is a naturalized U.S. citizen who was born in Indonesia and has been involved in the computer industry for 15 years. The Respondent is currently involved in maintaining e-commerce business activities, and is planning to serve the Indonesian e-commerce business.
As a professional computer programmer, the Respondent has registered other domain names based upon Indonesian words such as <iklan.biz>, and can show demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
MOBIL is an Indonesian word, which means “car” and is derived from the Dutch word “automobiel.” MOBIL is a commonly used Indonesian word.
Complainant should not have exclusive ownership nor licensing rights of commonly used Indonesian words, or words commonly used in other languages.
Complainant’s trademarks cover lubricants, radios, clothing names, uniforms, house organs, dramatic series of televisions programs, clocks, retail foods store services, towels, travel services, chemicals, paints and other goods and services, not cars.
Complainant’s MOBIL mark is undoubtedly famous, as it is shown by the wide variety of services EMOC tries to license. However, EMOC should be conscious that the Internet is a worldwide medium that brings together peoples of different cultures and languages.
Respondent has the rights or legitimate interest in the domain name <mobil.biz> and has made demonstrable preparation to use the domain name for Indonesian Internet business.
Respondent did not register the domain name in bad faith. Respondent has no intention of infringing upon or otherwise violating the rights of EMOC, because of the worldwide characteristic of the Internet; and the nature of business. The Respondent is not interested in the lubricant associated businesses, but is interested in the “car” related e-commerce possibilities specific to the Indonesian or Indonesian-speaking market.
C. Additional Submissions
Complainant points out Respondent’s alleged lack of evidence set out in the Response of legitimate rights and interests and lack of bad faith. Complainant rebuts Respondent’s argument that Complainant has no rights in Indonesia for the mark MOBIL, and, as such, has no claim to the <mobil.biz> domain. Complainant submits that it owns trademark registrations for the word MOBIL not only in Indonesia, but in what appears to be every country in the world and attaches evidence of these registrations by registration number and date of registration.
Complainant is a major corporation located in Irving, Texas, which has, for a long period of time, engaged in the oil, lubricant, service station, and related business in the United States and elsewhere in the world.
Complainant owns extensive trademark registrations in the United States and in virtually every other country in the world for the mark, MOBIL.
The mark, MOBIL, is a distinctive, famous mark not only in the United States but worldwide.
Respondent is a United States citizen, born in Indonesia, who operates as a professional computer programmer, in Cerritos, California.
Respondent registered the domain name, <mobil.biz>, on March 27, 2002.
Respondent had notice of Complainant’s trademark registrations in the mark, MOBIL, at the time of the domain name registration.
Complainant has rights and interests in the word, MOBIL.
Respondent has no legitimate rights or interests in the word MOBIL or <mobil.biz>
Respondent registered the domain name, <mobil.biz>, in bad faith.
Paragraph 15(a) of the STOP 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.”
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant has rights in the mark, MOBIL, by virtue of its numerous trademark registrations in the United States and in other countries throughout the world.
Respondent suggests that Complainant has no rights to MOBIL, since MOBIL, is an Indonesian word meaning “car.” It is a commonly used Indonesian word, used daily in both conversation and in a literal way, Respondent contends. Complainant demonstrates that it owns a trademark registration for MOBIL in the Country of Indonesia. The fact that a trademark registered word is a common word in a foreign language does not mean that it cannot be registered and be protected. See Valio Oy v. Tcova Oy, D2001-0805 (WIPO Aug. 24, 2001); Kvaerner ASA v. Tele og Media Consult as, D2001-0809 (WIPO Sept. 12, 2001).
Complainant has rights in the mark.
It is obvious from the pleadings and evidence that Complainant never licensed Respondent to use the mark, MOBIL, and that Complainant and Respondent are not affiliated in any way. Complainant contends that Respondent does not own a trademark registration for the mark, MOBIL, nor does Respondent operate a business or other organization under the name MOBIL, nor has Respondent made a demonstrable preparation to use the domain name <mobil.biz> in connection with a bona fide offering of goods and services. When such a showing is made, the following rule applies.
“When a Complainant asserts that a Respondent has no rights or legitimate interests in respect of a domain mane, it is incumbent upon the Respondent to produce evidence of such rights and interests.” PRL USA Holdings, Inc. v. Search Hound, D2001-00010 (WIPO Feb. 13, 2002).
The Respondent can demonstrate his rights and legitimate interests in the domain name in responding to the Complaint in any of the ways set out in Paragraph 4(c) the Start-up Trademark Opposition Policy and Rules for .BIZ.
The first of the three methods set out is that Respondent may show that he is the owner or beneficiary of a trade or service mark that is identical to the domain name. Respondent makes no such contention nor offers any evidence of any such trade or service mark.
The third of the three methods is that Respondent has been commonly known by the domain name. Respondent makes no such contention.
The only method Respondent relies upon is the remaining of the three methods. Respondent contends that before any notice to him of the dispute, he used or made demonstrable preparations to use, the domain name, in connection with a bona fide offering of goods or services.
As evidence of Respondent’s preparation for use of the domain name, Respondent states that he has registered other domain names based upon Indonesian words such as <iklan.biz>, and can show demonstrable preparations to use the domain name. Respondent contends that he installed a web server on another domain name based upon an Indonesian words such as <iklan.biz>. Respondent says that he intends to do something with the domain name in Indonesian e-commerce. No documents are attached to the Response to support this allegation. No documents are attached to the Response to support the allegations regarding <ilkan.biz>. Even so, the use or preparation to use <iklan.biz> is not preparation for use of <mobil.biz>. All that remains is the bare statement made by Respondent that he plans to use <mobil.biz> in the future in some unspecified manner that relates in some way with “cars.”
Recent STOP Policy decisions insist that a respondent produce “concrete evidence” of rights and legitimate interests. See PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 13, 2002). That case accepted the reasoning set out in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), which stated “Concrete evidence constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the Panel require that a respondent come forward with concrete evidence that the assertions made in the response are true. Evidence in the form of documents or third party declarations should be furnished in support of such assertions.”
See also Twentieth Century Fox Film Corp. v. Bernstein, FA102962 (Nat. Arb. Forum Feb. 27, 2002) which found that Respondent’s assertion that she registered the domain name in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue.
Respondent has presented nothing to support his rights or legitimate interests other than his simple assertion that he will use the domain name sometime in the future.
That showing fails to satisfy the standard set out in PRL USA Holdings, Inc. v. Search Hound, which standard the Panel finds is the correct standard to be applied in this case.
Complainant prevails on this issue.
It is the responsibility of Complainant to prove either bad faith registration or use of the domain name. In this case there has been no use. The issue is whether Complainant can show bad faith registration. The ways Complainant can attempt to show bad faith are set out in Paragraph 4(b)
of the Policy. Under the circumstances that usually exist in a STOP proceeding, it is difficult for a Complainant to produce direct evidence on these issues. However, it is clear that Respondent was aware of Complainant’s mark prior to Respondent registering the domain name. Respondent admits that it is a famous mark. Respondent is a computer programmer in California. Considering the famous and common notoriety of Complainant’s mark MOBIL, and Respondent’s acknowledgment of its common and notorious existence, bad faith registration can be correctly inferred. See Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31, 2001); Samsonite Corp. v. Colony Holdings, FA94313 (Nat. Arb. Forum Apr. 17, 2000).This inference in enforced by Respondent’s stated purpose of using the domain name in some enterprise relating to cars. Complainant’s business is closely related to cars. There can be little doubt that confusion will inevitably arise when the Respondent finally
uses the domain name in the manner that he says he will. The attempt to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on the web site or location, constitutes evidence of bad faith registration. See Paragraph 4(b)(iv) of the Policy. That likelihood of confusion with the Complainant’s mark MOBIL, by Respondent’s
web site at <mobil.biz>, once put into operation by Respondent, is obvious and inescapable. That is a result the Policy is calculated to avoid. See Fluor Corp. v. Song, FA102757 (Nat. Arb. Forum Jan 31, 2002); Pillsbury Co. v. Prebaked Scandinavia ab, FA102970 (Nat. Arb. Forum Jan 31, 2002).
Based upon the facts and circumstances of this domain name dispute case, the Panel infers the intent necessary to make a finding under Paragraph (b)(iv) of the Policy.
Complainant prevails on this issue.
THE DECISION OF THE
PANEL IS THAT THE DOMAIN NAME, <MOBIL.BIZ>, NOW REGISTERED TO RESPONDENT,
STEPHEN NURWONO, BE TRANSFERRED TO COMPLAINANT, EXXON MOBILE CORPORATION.
THERE ARE NO FURTHER IP CLAIMS PENDING UNDER THE STOP POLICY AGAINST THIS DOMAIN NAME.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2002
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