Hess Corporation v. John
Doe, Holder of Domain Name <hess-corporation-uk.com>
Claim Number: FA0806001212503
PARTIES
Complainant is Hess Corporation (“Complainant”), represented by Paul
J. Reilly, of Baker Botts L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hess-corporation-uk.com>, registered
with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
The Honorable Charles K. McCotter, Jr. (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 24, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 25, 2008.
On June 25, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the National Arbitration Forum that the <hess-corporation-uk.com>
domain name is registered with Melbourne It,
Ltd. d/b/a Internet Names Worldwide and that Respondent is the current
registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has
verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide 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 July 1, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 21, 2008 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@hess-corporation-uk.com by e-mail.
A timely Response was received and determined to be complete on July 14, 2008.
On July 21, 2008, Complainant submitted a timely Additional Submission.
On July 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed the Honorable Charles K. McCotter, Jr.
(Ret.) as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The domain name <hess-corporation-uk.com> is confusingly similar to Complainant’s famous HESS mark and registrations. Respondent has no right to or legitimate interest in the mark HESS or the domain name <hess-corporation-uk.com>. Respondent registered and used the domain name <hess-corporation-uk.com> in bad faith.
B. Respondent
Respondent contends he has been the victim of identity theft.
Respondent states that although the WHOIS record provides his
information, he did not register the disputed domain name and was unaware of
Complainant’s business until the commencement of these proceedings.
C. Additional Submission
Based on Respondent’s Response, Complainant, in its Additional
Submission, contends that the actual registrant of the domain name provided
false WHOIS information in that the contact information doesn’t identify the
registrant. The actual registrant acted
in bad faith by stealing the identity of the person listed in the contact
information.
FINDINGS
Complainant, Hess
Corporation, is an integrated oil and gas company with its headquarters in
The Complaint is based on Complainant’s trademark rights in
and to the mark HESS. Hess owns several
trademark registrations consisting of or incorporating HESS in the
The domain name <hess-corporation-uk.com>
is not owned, controlled, licensed or otherwise authorized by Complainant. In late 2007, the domain name <hess-corporation-uk.com> directed Internet
users to a site that not only made unauthorized use of the HESS mark, but also
was virtually identical to Hess’ own website except for several areas which
were not functional or did not properly load.
The site no longer resolves at all.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Preliminary
Issue: Redaction of Respondent’s Identity
Respondent contends he has been the victim of identity theft.
Respondent states that although the WHOIS record provides his
information, he did not register the disputed domain name and was unaware of
Complainant’s business until the commencement of these proceedings. As the Panel finds Respondent is a victim of
identity theft, the Panel has redacted Respondent’s personal information from the
decision to prevent the further victimization of Respondent. In Wells
Complainant has provided evidence
of the registration of its HESS mark with the United States Patent and
Trademark Office (“USPTO”) on April 22, 1986 (Reg. No. 1,391,095) and the
United Kingdom Intellectual Property Office (“UKIPO”) on November 18, 1994
(Reg. No. 1,503,668). The Panel finds
Complainant’s registration of its HESS mark with the USPTO and the UKIPO is
sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which the
respondent operates; therefore it is sufficient that the complainant can
demonstrate a mark in some jurisdiction); see
also
Respondent’s
<hess-corporation-uk.com> domain name incorporates
Complainant’s HESS mark with the additions of two hyphens, the descriptive term
“corporation,” the geographical abbreviation “uk,” and the generic top-level
domain “.com.” The Panel finds these alterations
do not distinguish the disputed domain name from Complainant’s mark and
therefore the disputed domain name is confusingly similar to Complainant’s HESS
mark pursuant to Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has not authorized Respondent to use its HESS mark. Respondent is not commonly known by the <hess-corporation-uk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant alleges Respondent’s disputed domain name previously resolved to a website that replicated Complainant’s official website. Complainant contends Respondent did this by using a software product called HTTrack which replicates website content. Complainant submits evidence in the form of HTML code which shows the use of HTTrack software to capture the content at Complainant’s <hess.com> domain name. The Panel finds Respondent was attempting to “pass itself off” as Complainant by replicating Complainant’s official website resolving from its <hess.com> domain name. The Panel finds Respondent’s attempt to pass itself off as 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 Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant asserts Respondent’s website does not currently resolve to an active website. The Panel finds Respondent’s failure to make an active use of the disputed domain does not confer rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends Respondent was
previously using the confusingly similar domain name to presumably profit by
passing itself off as Complainant.
Complainant provides evidence Respondent used HTTrack software to
replicate Complainant’s official website in order to give the appearance
Respondent’s disputed domain name was affiliated with Complainant. The Panel finds Respondent’s attempt to
profit from the goodwill Complainant has established in its HESS mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Additionally,
Complainant alleges Respondent’s disputed domain name does not currently
resolve to an active website. The Panel
finds Respondent’s failure to make an active use of the disputed domain name is
evidence Respondent registered and is using the disputed domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
DCI
Furthermore, the registrant of the domain name acted in bad faith by stealing the identity of another for purposes of registration and use of the domain name. See Maison Bouchard Père et Fils v. Bouchardpereetfils.Com/ Domain Administration, D2007-1769 (WIPO Mar. 3, 2008).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <hess-corporation-uk.com> domain name
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: July 29, 2008
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