Exxon Mobil Corporation v. Mary McCausland
Claim Number: FA0807001218131
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Purvi
J. Patel, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <blog-exxonmobil.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2008.
On July 30, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <blog-exxonmobil.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 August
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of August
26, 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@blog-exxonmobil.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions:
Complainant is a prominent
oil company that uses the EXXONMOBIL mark in its advertising and sales.
Complainant has registered
the EXXONMOBIL trademark with multiple governmantal authorities, including with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,510,978,
issued November 20, 2001) and the Australian Trade Marks Office (Reg. No.
791696, issued 21 April 1999).
Respondent registered the <blog-exxonmobil.com> domain name on July 3, 2008, and uses it to display links referring to EXXONMOBIL energy services, job opportunities, credit cards, rewards programs, and other products and services purporting to be affiliated with Complainant.
These links lead to landing pages advertising companies such as Shell Oil and Chevron that compete with Complainant’s business.
Respondent’s <blog-exxonmobil.com> domain name is confusingly similar to Complainant’s EXXONMOBIL mark.
Respondent does not have any rights or legitimate interests in the domain name <blog-exxonmobil.com>.
Respondent registered and uses the <blog-exxonmobil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has registered the EXXONMOBIL mark with pertinent governmental authorities, including the USPTO and the Trade Marks Office of Australia, where Respondent reportedly resides. This sufficiently establishes Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that a complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004): “Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’).”
Respondent’s <blog-exxonmobil.com>
domain name contains Complainant’s EXXONMOBIL mark in its entirety combined
with the generic word “blog” and a hyphen, as well as the generic top-level
domain (“gTLD”) “.com.” The addition of
the word “blog” does not eliminate confusion that may lead Internet users to
believe that Complainant is affiliated with the <blog-exxonmobil.com> domain name. See Arthur Guinness Son & Co. (
The Panel therefore concludes that Respondent’s <blog-exxonmobil.com> domain name is
confusingly confusingly similar to Complainant’s EXXONMOBIL mark pursuant to
Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <blog-exxonmobil.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must 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 interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name).
From the allegations of the Complaint, we are persuaded that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Because Respondent has not responded to the Complaint, we are entitled to conclude that Respondent lacks rights or interests in its disputed domain name. Nonetheless we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under the terms of Policy ¶ 4(c).
In this connection, we first note that there is no dispute as to Complainant’s allegation that Respondent uses the <blog-exxonmobil.com> domain name to display information on the associated web site purporting to be associated with Complainant, or that visitors to that site are redirected to the websites of Complainant’s business competitors. Thus, Respondent’s use of the <blog-exxonmobil.com> domain name constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000):
The unauthorized providing of information and services under a mark
owned by a third party cannot be said to be the bona fide offering of goods or services.
See also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a
respondent was not using a domain name within the parameters of Policy ¶¶
4(c)(i) or (iii) where that respondent used the domain name to take advantage
of a complainant's mark by diverting Internet users to a competing commercial
site).
We also take note of the fact that the pertinent WHOIS information for the <blog-exxonmobil.com> domain name identifies Respondent as “Mary McCausland” and that there is no evidence in the record indicating that Respondent is commonly known by the <blog-exxonmobil.com> domain name. We therefore conclude that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.” See also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
For these reasons, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the <blog-exxonmobil.com> domain name, as
alleged, is likely to disrupt Complainant’s business by diverting customers to
Complainant’s competitors. This behavior
is evidence of bad faith registration and use of the domain pursuant to Policy
¶ 4(b)(iii). See David
Hall Rare Coins v.
Additionally, Respondent’s registration and use of the <blog-exxonmobil.com> domain name is
likely to mislead Internet users into believing that Complainant is affiliated with
or sponsors the content posted to the resolving website. Respondent evidently creates this likelihood
of confusion for its commercial gain, presumably through the accrual of
referral or click-through fees.
Consequently, we conclude that Respondent’s registration and use of the <blog-exxonmobil.com> domain name
constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Asbury
Auto. Group, Inc. v.
As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).
We are thus led to find that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <blog-exxonmobil.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 17, 2008
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