Exxon Mobil Corporation v. Pluto Domain Services Pvt. Ltd.
Claim Number: FA0810001229768
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne
Stendell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <exxonmobilecard.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.
On October 20, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <exxonmobilecard.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 October 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 12, 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@exxonmobilecard.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <exxonmobilecard.com> domain name is confusingly similar to Complainant’s EXXONMOBILE mark.
2. Respondent does not have any rights or legitimate interests in the <exxonmobilecard.com> domain name.
3. Respondent registered and used the <exxonmobilecard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, is a widely recognized
global corporation that provides goods and services in the petrochemical
industry. Complainant resulted from a
merger in 1998 of two long-standing corporations, Exxon and Mobil. Prior to the merger, the marks EXXON and
MOBIL were registered with the United States Patent and Trademark Office
(“USPTO”). The MOBIL mark dates back to
1936 and the EXXON mark to 1970. After
the merger, Complainant registered the combined mark EXXONMOBIL in 2001 (Reg.
No. 1,273,879 issued January 18, 2001).
Complainant has registered its mark with the European Union’s Community
Trade Mark (“CTM”),
Respondent, Pluto Domain Services, Pvt. Ltd., registered <exxonmobilcard.com> December 20, 2003. The disputed domain name resolves to a website containing links to credit card services, including Complainant. However, the links lead to other landing pages with similar links or to third-party commercial websites referencing competing corporations.
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’s multiple registrations with the USPTO and foreign entities are sufficient to establish Complainant’s rights in the EXXONMOBIL mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <exxonmobilcard.com>
domain name is confusingly similar to Complainant’s mark, EXXONMOBIL, pursuant
to Policy ¶ 4(a)(i).
The disputed domain name incorporates Complainant’s entire mark,
EXXONMOBIL. Complainant licenses the use
of its mark to Citibank N.A. in order to offer credit card services to
consumers; therefore the addition of the generic term “card” creates consumer
confusion as it has an obvious relationship to Complainant’s business. The addition of the generic top-level domain
(“gTLD”) “.com” does not negate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i). See 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 [sic] or
confusing similarity for purposes of the Policy despite the addition of other
words to such marks”); 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 finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where complainant alleges that the respondent has no rights or legitimate interests to the disputed domain name, respondent must come forward with concrete evidence rebutting the allegations as this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Due to Respondent’s failure to respond to the Complaint, the Panel will determine Respondent’s rights or legitimate interests under Policy ¶ 4(a)(ii) in light of Complainant’s undisputed representations. The Panel may accept the allegations and inferences in the Complaint as true unless 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.”).
The disputed domain name resolves to a website offering
links to either new landing pages or third-party commercial websites, with
references to competitors of Complainant and Complainant’s own licensee for credit
card services, Citibank N.A. Respondent’s
website is assumed to be a pay-per-click (“PPC”) site where Respondent garners
referral fees when consumers click through to the advertised links. Respondent is exploiting the universality of
EXXONMOBIL to attract confused consumers to its website. The Panel finds that
Respondent has not used the disputed domain name in connection with bona fide offerings of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”); see also
Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat.
Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the
<gayaol.com> domain name with the intent to divert Internet users to
Respondent's website suggests that Respondent has no rights to or legitimate
interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds no evidence that Respondent is commonly known by the <exxonmobilcard.com> domain name. The WHOIS information identifies Respondent as “Pluto Domain Services Pvt. Ltd.” Thus, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); 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.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the disputed domain name, which is confusingly
similar to Complainant’s mark, evidences bad faith registration and use of the
disputed domain name. Respondent’s
website resolves to a list of links to providers that directly compete with
Complainant’s products. The Panel finds
that this evidence indicates Respondent’s intent to disrupt Complainant’s
business and take advantage of Complainant’s goodwill surrounding its
mark. The Panel therefore finds that
Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from the complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business); see also Travant Solutions, Inc. v. Cole,
FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the
domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating
on behalf of a competitor of Complainant . . .”).
In addition, Respondent likely receives compensation in the form of click-through fees from its use of the confusingly similar disputed domain name. The Panel finds that this is an attempt by Respondent to profit from the goodwill Complainant has established in its EXXONMOBIL mark, evidence that also supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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.”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonmobilecard.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 24, 2008
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