Exxon Mobil Corporation v. Domains By Proxy -
NA Proxy Account c/o Niche Domain Proxy Manager
Claim Number: FA0902001247242
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@exxonbillpay.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.”
DISCUSSION
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).
DECISION
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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