National Arbitration Forum

 

DECISION

 

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., New York, USA.  Respondent is John Doe, Holder of Domain Name is <hess-corporation-uk.com> (“Respondent”), Arizona, USA.

 

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 New York, New York.  Through its predecessor, Hess has been in the business of oil and gas exploration and production as well as the purchase, transport, and sale of crude and natural gas since 1920.  Exploration and production activities are conducted by Hess around the world.  Hess also manufactures, purchases, transports, trades and markets refined petroleum and other energy products such as natural gas and electricity.

 

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 United States and overseas, including the United Kingdom.  In addition, Hess has registered and owns dozens of domain names comprising the name and mark HESS, including <hess.com> and <hessgasstations.com>.

 

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 Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.  See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).  According to Policy 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.”  Consequently, the Panel determines that the circumstances of the present case, including the claim of identity theft by Respondent, warrant the redaction of Respondent’s personal information from the Panel’s decision.  Respondent did not register the disputed domain name, but rather an unknown third-party using his identity registered the <hess-corporation-uk.com> domain name. 

 

 

Identical and/or Confusingly Similar

 

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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).

 

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. Aspen STC, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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.

 

Registration and Use in Bad Faith

 

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 S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).

 

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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