Hess Corporation v. Much Media S.A.
Claim Number: FA0808001222043
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 <hessgascards.com>, registered with Spot Domain LLC d/b/a Domainsite.com.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 26, 2008.
On August 26, 2008, Spot Domain LLC d/b/a Domainsite.com confirmed by e-mail to the National Arbitration Forum that the <hessgascards.com> domain name is registered with Spot Domain LLC d/b/a Domainsite.com and that Respondent is the current registrant of the name. Spot Domain LLC d/b/a Domainsite.com has verified that Respondent is bound by the Spot Domain LLC d/b/a Domainsite.com 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 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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@hessgascards.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 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <hessgascards.com> domain name is confusingly similar to Complainant’s HESS mark.
2. Respondent does not have any rights or legitimate interests in the <hessgascards.com> domain name.
3. Respondent registered and used the <hessgascards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the HESS mark with numerous jurisdictions worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 832,393 issued July 25, 1967) for petroleum products. Complainant also offers a range of credit cards to its consumers. Many of these cards and their information is available through Complainant’s <hesscard.com> domain name.
Respondent’s <hessgascards.com> domain name was registered on April 8, 2008. It resolves to a parked web page displaying a variety of advertisements and sponsored links, many of which are for third-party credit cards. Many of these third-parties directly compete with Complainant.
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.
Complainant has sufficiently established rights in the HESS
mark through registration with the USTPO pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark 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)).
The <hessgascards.com> domain name contains
Complainant’s HESS mark in its entirety followed by the generic and descriptive
terms “gas” and “cards.” Complainant
offers credit card services for its petroleum product customers. The terms “gas” and “cards” are not only
generic terms but also describe the services offered by Complainant. The addition of these terms does not
distinguish the disputed domain name.
The disputed domain name also includes the generic top-level domain
(“gTLD”) “.com.” However, the inclusion
of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. As a result, the Panel finds that the <hessgascards.com>
domain name is confusingly similar to Complainant’s HESS mark. 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 Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and
legitimate interests in the disputed domain name. When Complainant has established a prima facie case supporting its
contentions, as the Panel determines that is has in this case, the burden
shifts to Respondent to put forward evidence demonstrating it does have rights
or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Respondent has failed to reply to the Complaint. The Panel will proceed to examine the record
in consideration of the elements of Policy ¶ 4(c), however it will presume that
Respondent lacks rights and legitimate interests in the <hessgascards.com>
domain name. See Vanguard Group, Inc. v.
Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that
because Respondent failed to submit a Response, “Complainant’s submission has
gone unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015
(ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a
domain name dispute . . . but the failure to participate leaves a respondent
vulnerable to the inferences that flow naturally from the assertions of the
complainant and the tribunal will accept as established assertions by the
complainant that are not unreasonable.”).
Respondent is identified as “Much Media S.A.” in the WHOIS
information for <hessgascards.com> domain name. Complainant states that it has “never granted
Respondent permission to use the HESS mark or any similar name or mark and has
never authorized Respondent to market, promote, or sell any of Complainant’s
products or services.” Without any
additional information in the record, the Panel finds that Respondent is not
commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5,
2007) (concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name).
The <hessgascards.com> domain name resolves to
a parked web page featuring a series of sponsored links and
advertisements. Many of these links and
advertisements are for third-parties who offer services in direct competition
with those offered by Complainant.
Accordingly, the Panel finds Respondent’s use of the <hessgascards.com>
domain name to constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with the 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 also Tesco Pers. Fin. Ltd.
v. Domain Mgmt. Servs., FA
877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not
using the <tesco-finance.com> domain name in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair
use by maintaining a web page with misleading links to the complainant’s
competitors in the financial services industry).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a series of links to
and advertisements for third-parties, many of whom offer services in direct
competition with Complainant. The Panel
finds that this competitive and disruptive use of the disputed domain name
establishes Respondent’s bad faith registration and use of the <hessgascards.com>
domain name pursuant to Policy ¶ 4(b)(iii).
See David Hall Rare Coins v.
Moreover, the Panel may presume that Respondent financially
benefits from the advertisements it maintains and referral fees it may collect
for the sponsored links contained on the website resolving from the disputed
domain name. The Panel finds this to be
additional evidence of Respondent’s bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged
in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names); see also Asbury Auto. Group, Inc. v.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hessgascards.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 13, 2008
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