Exxon Mobil Corporation v. Exxon Mobil c/o Internet Coordinator
Claim Number: FA0808001220454
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne
Stendell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com>, registered with Namesdirect.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 15, 2008.
On August 20, 2008, Namesdirect confirmed by e-mail to the National Arbitration Forum that the <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names are registered with Namesdirect and that Respondent is the current registrant of the names. Namesdirect has verified that Respondent is bound by the Namesdirect 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 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@exxonmobilco.com, postmaster@exxonmobilcorporate.com and postmaster@exxonmobilecorp.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 19, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names are confusingly similar to Complainant’s EXXONMOBIL mark.
2. Respondent does not have any rights or legitimate interests in the <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names.
3. Respondent registered and used the <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, operates worldwide in the petroleum and chemical products industry. Complainant operates under the EXXONMOBIL mark, which has been registered with numerous governmental trademark authorities (e.g. Reg. No. 2,510,978 issued November 20, 2001). Complainant also owns and operates the <exxonmobil.com> domain name.
Respondent registered the disputed <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names on July 29, 2008. The <exxonmobilco.com> and <exxonmobilecorp.com> domain names resolve to websites that feature third-party advertisements for Complainant’s competitors. The <exxonmobilcorporate.com> domain name does not resolve to an operating website.
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 the 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:
(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.
The Panel finds that Complainant has sufficient rights in
the EXXONMOBIL mark through its registrations with the USPTO under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding that the complainant had established rights in the
PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the
USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)).
Respondent’s <exxonmobilco.com>, <exxonmobilcorporate.com>
and <exxonmobilecorp.com> domain names all include
Complainant’s EXXONMOBIL mark, while adding the generic terms or abbreviations
“corporate,” “corp” and “co,” as well as the generic top-level domain
“.com.” The addition of “.com” is irrelevant
since every domain name requires a top-level domain. Moreover, all of the generic words or
abbreviations stem from the fact that Complainant is incorporated, thus no
significant distinguishing aspect is created.
Therefore, the Panel finds that the disputed domain names are
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of
a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has set forth a prima facie case supporting its allegations, as it has in this case, the burden shifts to Respondent to prove that is does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of [UDRP] paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent offers no evidence to suggest that it is commonly known by the disputed domain names. Moreover, the WHOIS domain name registration information provides no contrary assertion. Finally, there is no evidence that Respondent ever obtained a license to use Complainant’s mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent’s <exxonmobilco.com> and <exxonmobilecorp.com>
domain names resolve to websites that feature third-party advertisements
for Complainant’s competitors. The Panel
infers that Respondent receives commercial benefit through the accrual of
click-through fees. Therefore, the Panel
finds that these disputed domain names are not being used in conjunction with a
bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc.
v. Abend, FA
970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a
pay-per-click website at a confusingly similar domain name does not represent a
bona fide offering of goods or
services or a legitimate noncommercial or fair use, regardless of whether or
not the links resolve to competing or unrelated websites or if the respondent
is itself commercially profiting from the click-through fees); see also Disney Enters., Inc. v. Kamble,
FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a
pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
Respondent’s <exxonmobilcorporate.com> domain name does not resolve
to any operating website, and there is no evidence of any demonstrable plans by
Respondent to use the disputed domain name.
Therefore, the Panel finds that Respondent’s inactive use of the
disputed domain name fails to garner any rights or legitimate interests under
Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel
concludes that Respondent's [inactive] holding of the domain name does not
establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights
or legitimate interests in the domain name <solgarvitamins.com> where the
respondent merely inactively held the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <exxonmobilco.com> and <exxonmobilecorp.com>
domain names resolve to websites
that advertise Complainant’s competitors.
The Panel thus finds that Respondent’s registration and use of these
disputed domain names was conducted in bad faith
to disrupt Complainant’s business under Policy ¶ 4(b)(iii). See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003)
(“The Panel declines to adopt a narrow interpretation of the term ‘competing,’
as urged by Respondent . . . The Panel agrees with Complainant that at least
some confusion and/or diversion of consumers is likely here, even though
Complainant's and Respondent's tablets address different medical issues.”); see
also Surface Prot. Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”).
Respondent’s use of the <exxonmobilco.com> and <exxonmobilecorp.com> domain names intentionally attracts Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation of the website and disputed domain name. Internet users seeking Complainant’s products and services would likely find Respondent’s disputed domain names due to their confusing similarity to Complainant’s mark. Such users would then be offered competing products, and consequentially be confused as to Complainant’s source or affiliation with the website or disputed domain name. Thus, the Panel finds that Respondent’s registration and use of the disputed domain names was in bad faith under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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).
The Panel also finds that Respondent’s inactive holding of
the <exxonmobilcorporate.com> domain name constitutes bad
faith registration and use under Policy ¶ 4(a)(iii). See
Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also Pirelli & C. S.p.A. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <exxonmobilco.com>, <exxonmobilcorporate.com> and <exxonmobilecorp.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 3, 2008
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