Exxon Mobil Corporation v. Faiz AlMusalami
Claim Number: FA0811001235534
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 <exxonmobilnet.com> and <exxon2.com>, registered with Wild West Domains, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2008.
On November 24, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonmobilnet.com> and <exxon2.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 December 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 22, 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@exxonmobilnet.com and postmaster@exxon2.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 29, 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 <exxonmobilnet.com> domain name is confusingly similar to Complainant’s EXXONMOBILE mark and Respondent’s <exxon2.com> domain name is confusingly similar to Complainant’s EXXON mark.
2. Respondent does not have any rights or legitimate interests in the <exxonmobilnet.com> and <exxon2.com> domain names.
3. Respondent registered and used the <exxonmobilnet.com> and <exxon2.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant’s EXXONMOBIL mark is registered with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 2,510,978 issued
November 20, 2001) and the Saudi Arabian Department of Trademarks Registration
(“SADTR”) (Reg. No. 719/6 issue March 14, 2004). Complainant’s EXXON mark is additionally
registered with both the USPTO (Reg. No. 902,044 issued November 10, 1970) and
the SADTR (Reg. No. 85/55 issued June 20, 1981). Complainant uses the
EXXONMOBIL and EXXON marks for various petroleum products and services.
Additionally, both marks are used in regards to business services provided in
the areas of insurance and aviation. Complainant conducts significant business
in the country of
Respondent’s <exxonmobilnet.com> domain name was registered on June 28, 2008.
It resolves to a website titled “Welcome to
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 sufficiently
established rights in both the EXXONMOBIL and EXXON mark through registration
with the appropriate governmental authorities in the
Respondent’s <exxonmobilnet.com> domain name contains Complainant’s
EXXONMOBILE mark in its entirety followed by the generic term “net” and the
generic top-level domain (“gTLD”) “.com.” In general, the incorporation of a
gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis
because it is a required element in every disputed domain name. 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). Furthermore, the use of the generic term “net” does not sufficiently
differentiate the disputed domain name. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001)
(finding the <broadcomonline.com> domain name is confusingly similar to
the complainant’s BROADCOM mark); see
also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001)
(finding that the addition of the generic word “Net” to the complainant’s ICQ
mark makes the <neticq.com> domain name confusingly similar to the
complainant’s mark). For both of these reasons, the Panel finds that the <exxonmobilnet.com>
domain name is confusingly similar to Complainant’s EXXONMOBIL mark pursuant to
Policy ¶ 4(a)(i).
Respondent’s <exxon2.com>
domain name contains Complainant’s EXXON mark in its entirety followed by the
numeral two (“2”) and the generic top-level domain (“gTLD”) “.com.” As
previously established, the addition of a gTLD is irrelevant to these
proceedings. Moreover, the incorporation of the numeral two (“2”) does not
sufficiently distinguish the disputed domain name. See Am. Online Inc. v.
Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the
addition of the numeral 4 in the domain name <4icq.com> does nothing to
deflect the impact on the viewer of the mark ICQ and is therefore confusingly
similar); see also Hitachi, Ltd. v.
Fortune Int’l Dev. Ent.
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Before the Panel may proceed under Policy ¶ 4(a)(ii), it must first inquire as to whether Complainant has
demonstrated a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain names. See VeriSign Inc. v. VeneSign
Respondent has failed to reply to the Complaint. Therefore,
the Panel may presume that Respondent lacks all rights and legitimate interests
in the disputed domain names. Nonetheless, the Panel will proceed to examine
the record in consideration of the elements listed under Policy ¶ 4(c). See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw
adverse inferences from the respondent’s failure to reply to the complaint); see also 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.”).
Complainant contends that is has never authorized or
otherwise granted Respondent permission to use either its EXXON or EXXONMOBIL
marks in any way. Moreover, the WHOIS information for both of the disputed
domain names identifies Respondent solely under the alias “Faiz AlMusalami.”
Without any information to the contrary, the Panel finds that Respondent is not
commonly known by either the <exxonmobilnet.com> and <exxon2.com> domain
names pursuant to Policy ¶ 4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record); 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 <exxonmobilnet.com>
domain name resolves to a website purporting to be a homepage for
radio-controlled models club. The resolving website is wholly unrelated to
Complainant’s EXXONMOBIL mark and business and has no apparent connection to
the disputed domain name itself. As a result, the Panel finds that Respondent
has not made a bona fide offering of goods or services nor a legitimate noncommercial
use of the <exxonmobilnet.com> domain name pursuant to Policy ¶ ¶
4(c)(i) and (iii) respectively. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent 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 also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb.
Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent has failed to make any active use of the <exxon2.com> domain name. Without any additional information in the record, the Panel considers this to be sufficient evidence that Respondent specifically lacks rights and legitimate interests in the <exxon2.com> domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no active use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [inactive use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The Panel recognizes that the elements listed under Policy ¶ 4(b) are not exclusive and that the Panel may look to the totality of the circumstances when making a bad faith determination. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
The <exxonmobilnet.com>
domain name resolves to a website purporting to be an online club for promoting
radio-controlled model airplanes, helicopters, cars and boats. The resolving
website indicates that the name of this organization is
In regards to the <exxon2.com>
domain name, the Panel notes that Respondent has failed to make any active use.
In this case, considering Respondent’s infringing use of the <exxonmobilnet.com> domain name, and the increased likelihood
that Respondent will put the <exxon2.com> domain name to similar use if allowed, the Panel
determines that Respondent’s failure to make an active use of the <exxon2.com>
domain name is evidence that Respondent has additionally registered and is
using the <exxon2.com> domain name in bad faith pursuant to 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 DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s inactive use
of the domain name satisfies the requirement of ¶ 4(a)(iii)
of the Policy).
The Panel concludes that Complainant has sufficiently established 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 <exxonmobilnet.com> and <exxon2.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: January 6, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum