Exxon Mobil Corporation v. Domains By Proxy - NA Proxy Account c/o Niche Domain Proxy Manager
Claim Number: FA0902001247242
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne Stendell, of Haynes and Boone, LLP, Texas, USA. Respondent is Domains By Proxy - NA Proxy Account c/o Niche Domain Proxy Manager (“Respondent”), represented by Maria Bergsten, Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxonbillpay.com>, registered with Spot Domain LLC.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2009.
On February 20, 2009, Spot Domain LLC confirmed by e-mail to the National Arbitration Forum that the <exxonbillpay.com> domain name is registered with Spot Domain LLC and that the Respondent is the current registrant of the name. Spot Domain LLC has verified that Respondent is bound by the Spot Domain LLC 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 February 26, 2009, the National Arbitration Forum granted the Parties’ February 12, 2009 Joint Request to Stay the Administrative Proceeding for a one-time period of forty-five days until April 12, 2009.
On April 9, 2009, the National Arbitration Forum granted Complainant’s Request to Remove the Stay of Administrative Proceeding, thereby causing the case to proceed.
On April 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 4, 2009.
On May 11, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns the famous marks EXXON and EXXONMOBIL and is one of the world’s best-known companies. The official website for Complainant’s Exxon brand is <exxon.com>, and the official website for Exxon Mobil Corporation is <exxonmobil.com>. Complainant’s credit card services are promoted on Complainant’s websites at <exxon.com/USA-English/GFM/Consumer_Promotions/Promotions.asp> and <exxonmobil.com/Corporate/contactus_contact_credit.aspx>.
In 1999, Exxon Corporation and its subsidiaries joined with Mobil Corporation and its subsidiaries to create Exxon Mobil Corporation. Before joining to become ExxonMobil, Exxon Corporation was a well-established, multinational company that had been in business for decades and, along with its various subsidiaries, provided business operations in many areas, including the marketing, sale, and distribution of petroleum and chemical products and services. ExxonMobil began using the mark EXXON in 1967 to distinguish its products and services from those of others. The EXXON and EXXONMOBIL marks have come to represent in the minds of the public quality products and services, and both of those marks are distinctive and world famous.
The mark EXXON is arbitrary, fanciful, and inherently distinctive. It is through this mark that consumers identify and recognize the source of Complainant’s products and services.
Moreover, Complainant, formerly Exxon Corporation, is featured extensively in news articles and on the Internet and has been ranked among the top three companies in the FORTUNE 500 listings since 1955. See http://money.cnn.com/magazines/fortune/fortune500_archive/full/1955/ (sample listings from 1955 and 2008 are attached as Exhibit F).
The Domain Name is confusingly similar to the EXXON and EXXONMOBIL marks because it incorporates Complainant’s well-known and distinctive trademarks in their entirety. Given the internationally well-known nature of Complainant’s ExxonMobil Marks, Respondent’s misappropriation of the marks in the Domain Name is particularly likely to cause confusion.
Accordingly, just as consumers (correctly) expect to reach a website offering products, services, or information provided by or authorized by ExxonMobil via the domain names <exxon.com> and <exxonmobil.com>, there is no question that consumers will be confused into believing that <exxonbillpay.com> is also owned and operated by Complainant. As a result, because the Domain Name incorporates the famous ExxonMobil Marks in their entirety in addition to non-distinctive matter, the Domain Name is identical or confusingly similar to Complainant’s Marks.
Respondent has never used, nor made any demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The website located at <exxonbillpay.com> is operated by Respondent solely for commercial gain.
First, Respondent is not using, and has not used, the Domain Name in connection with any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of the Domain Name. Rather, the demonstrated purpose and use of the Domain Name is to exploit the ExxonMobil Marks for profit by confusing and diverting consumers to Respondent’s site in order to aggregate advertising revenue through the use of sponsored links. In addition, Respondent is not currently known and has never been known as “exxonbillpay.com” or any variation thereof. Given the fame and distinctive nature of Complainant’s ExxonMobil Marks, it would be impossible for Respondent to claim to be “commonly known by” any derivative of the marks EXXON or EXXONMOBIL. See Nike, Inc. v. de Boer, D2000-1397, available at http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1397.html (WIPO Dec. 29, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant’s distinctive and famous NIKE trademark); see also Exxon Mobil Corp. v. Fisher, D2000-1412, available at http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1412.html (noting that the mark EXXON is very likely one of the most famous trademarks in the world). By virtue of misappropriating the famous EXXON mark, Respondent could never have a bona fide or legitimate business under the Domain Name. The presumption is that no one else can be commonly known by a well-known mark or trade name. See Pepsico, Inc. v. Thompson, FA 114678, available at http://domains.adrforum.com/domains/decisions/114678.htm (Nat. Arb. Forum Aug. 7, 2002). Use of another’s marks in a domain name does not establish that an individual is commonly known by a name or that the individual has legitimate rights to the name.
Finally, Complainant has never consented to Respondent’s use of the ExxonMobil Marks. Lack of consent supports a finding that Respondent has no legitimate interests in the Domain Name because Respondent is using the Domain Name only in connection with the operation of a link farm, is not and has never been known as <exxonbillpay.com>, and is using the ExxonMobil Marks without consent, Respondent clearly is not making any legitimate use of the Domain Name, nor does Respondent have any rights or legitimate interests in the Domain Name.
Respondent’s use of the Domain Name to create confusion with the ExxonMobil Marks and to divert customers from Complainant’s legitimate sites, for Respondent’s own commercial gain, constitutes evidence of bad faith registration and use of the Domain Name. Since Respondent uses the Domain Name to operate a link farm that provides links to websites promoting products and services similar to or competitive with those offered by Complainant and its affiliates, consumers searching for information concerning Complainant are likely to become confused as to whether Respondent is connected, affiliated or associated with, or sponsored or endorsed by Complainant
Additionally, the fame of Complainant’s Marks supports a finding that Respondent registered the Domain Name in bad faith and with full knowledge of ExxonMobil’s rights in the marks EXXON and EXXONMOBIL Furthermore, “when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests ‘opportunistic bad faith
In addition, upon information and belief, Respondent is shielding the identity of the underlying registrant of the Domain Name. While such proxy registration and identity shield services can serve a legitimate purpose, they are often abused by cybersquatters – as is the case here and use of a proxy service would more usually (although not necessarily always) be indicative that the respondent is seeking to hide its activity from scrutiny in proceedings under the Policy. The natural inference from this is a negative one – that the respondent has ‘something to hide. Furthermore, as noted above, Respondent unquestionably had knowledge of Complainant’s EXXON and EXXONMOBIL marks when it registered the Domain Name and commenced use of the EXXON and EXXONMOBIL marks on its website. By registering the Domain Name with knowledge of Complainant’s Marks, and thus falsely representing that to the best of its knowledge and belief its use and registration of the Domain Name did not infringe the legal rights of a third party, Respondent breached Section 17 of its Registration Agreement with Spot Domain LLC d/b/a DomainSite.com. On a final note, Respondent’s bad faith registration of the Domain Name prevents the Complainant from reflecting its trademarks in a corresponding domain name. As a result, due to Respondent’s use of the Domain Name to create confusion with the ExxonMobil Marks and to divert customers from Complainant’s legitimate sites, for Respondent’s commercial gain, the fame of Complainant’s Marks, the use of a privacy-shielding service to conceal the registrant’s true identity, and Respondent’s violation of the Registration Agreement, Respondent clearly has registered and used the Domain Name in bad faith.
Respondent acquires domain names to be used for either dedicated websites providing goods or services or as generic popular search terms in Direct Navigation. Respondent goes to great lengths to avoid registering domain names that trigger trademark issues. All names are reviewed for trademark issues using both automated software and human review. Respondent does not know why its control system failed to catch the Domain Name at issue.
Immediately upon receipt of the current Complaint, Respondent contacted the Complainant to resolve the matter by a voluntary transfer of the Domain Name. Respondent has repeatedly communicated its willingness to transfer the Domain Name, without charge or condition. In fact, during the stipulated suspension period, on March 27th, Respondent transferred control over the Domain Name to Complainant, without condition. Two weeks later, and without giving any notice or reason therefore, Complainant reinitiated the proceedings. This Stipulation is filed with the express request that the Domain Name be (finally) transferred to Complainant, without further findings.
Respondent has no desire to retain the Domain Name or even potentially interfere with Complainant or its asserted marks. Without waiving its position as to good faith registration, Respondent desires to transfer the Domain Name to Complainant.
For these reasons, and those below, Respondent requests that the Domain Name be transferred to Complainant without further findings of fact or liability, including those related to the elements set forth in Paragraph 4(a) UDRP Policy.
The Panel in this proceeding should merely order the transfer of the Domain Name without further findings as to the three (3) elements in the UDRP (trademark, legitimate interest and good/bad faith).
The filing of a Complaint entitles the Complainant only to recovery of the domain name. Respondent stipulates that it desires that the domain name be transferred to Complainant. Accordingly, the stipulation by Respondent to the transfer acts as an acceptance of the remedy demanded in the Complaint. After receiving first notice in the form of the current UDRP Complaint, Respondent immediately contacted the Complainant to transfer the Domain Name on a voluntary basis. Respondent's initiative indicates yet another (and prior) express stipulation to transfer on the part of the Respondent, all without admission.
In numerous prior UDRP decisions, Panels at both WIPO and NAF have consistently ruled that when a complaint has been filed and the respondent consents to the transfer of the domain name, it is inappropriate to issue any decision other than simply ordering the transfer of the domain name. Such panels hold that it would be improper to issue any findings of fact in such cases.
The Respondent has violated ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 asserts its rights in the EXXON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 902,044 issued November 10, 1970). The Panel finds that Complainant has sufficient rights in the EXXON mark under Policy ¶ 4(a)(i) through this registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The <exxonbillpay.com> domain name is confusingly similar to its EXXON mark despite the additions of the generic terms “bill pay” and the generic top-level domain “.com.” Previous panels have found such additions to be insufficient where the mark is the dominant element. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
The Panel finds that Respondent has failed to create 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 Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
Respondent’s use of a link farm to obtain commercial referral fees evidences Respondent’s bad faith registration and use. Panel finds that Respondent intended to create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and resolving website, engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent was on constructive and/or actual notice of Complainant’s trademark rights. Though generally constructive notice is not typically held as indicative of bad faith registration and use, the Panel nonetheless finds that Respondent had actual notice of Complainant and its trademark rights, it is bad faith registration and use under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Respondent consents to transfer the <exxonbillpay.com> domain name to Complainant. However, after the initiation of this proceeding, Spot Domain LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). The Panel has made a finding in order to avoid any question of Complaints rights.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonbillpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret), Panelist
Dated: May 22, 2009
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