ExxonMobil Oil Corporation v. Li Xuefeng
Claim Number: FA0907001276438
Complainant is ExxonMobil
Oil Corporation (“Complainant”), represented by Leanne Stendell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mobiltravelclub.com>, registered with Moniker.
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 July 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2009.
On July 30, 2009, Moniker confirmed by e-mail to the National Arbitration Forum that the <mobiltravelclub.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 July 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 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@mobiltravelclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2009, 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 <mobiltravelclub.com> domain name is confusingly similar to Complainant’s MOBIL mark.
2. Respondent does not have any rights or legitimate interests in the <mobiltravelclub.com> domain name.
3. Respondent registered and used the <mobiltravelclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ExxonMobil Oil Corporation, is a multinational company that has provided sales of petroleum and chemical products and services under the MOBIL mark for decades. Complainant has registered its MOBIL mark numerous times with various governmental trademark authorities worldwide, including the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 337,002 issued July 28, 1936) and the Chinese trademark authority (i.e. Reg. No. 174,462 issued March 30, 1983).
Respondent, Li Xuefeng, registered the <mobiltravelclub.com> domain name on March 14, 2009. The disputed domain name resolves to a website that features click-through advertising for a number of third parties, including some of Complainant’s competitors.
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 numerous registrations of the MOBIL mark with the USPTO (i.e. Reg. No. 337,002 issued July 28, 1936) and the Chinese trademark authority (i.e. Reg. No. 174,462 issued March 30, 1983) adequately demonstrate Complainant’s long-standing rights in the MOBIL mark under Policy ¶ 4(a)(i). See 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)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
The <mobiltravelclub.com> domain name contains
Complainant’s MOBIL mark along with the following: (1) the addition of the
descriptive terms “travel club;” and (2) the inclusion of the generic top-level
domain “.com.” The inclusions of
descriptive terms and a top-level domain are generally considered to be
insufficient distinctions of merit under the Policy. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See 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).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
There is no evidence in the record, including the WHOIS
information, by which the Panel could conclude that Respondent is commonly
known by the disputed domain name. The
WHOIS information lists Respondent as “Li Xuefeng,” and Complainant has
asserted that Respondent is not authorized to use Complainant’s mark. The Panel therefore finds that Respondent has
failed to meet Policy ¶ 4(c)(ii), in that Respondent
is not commonly known by the disputed domain name. 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 Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain
name resolves to a website that displays click-through advertising for third
parties. Some of these referral links
lead to Complainant’s (or its affiliates’) competitors in the transportation
services industry. Presumably,
Respondent is obtaining commercial referral fees when Internet users click the
displayed links. The Panel finds that
such a use fails as 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 Royal Bank of Scotland Grp
plc et al. v. Demand Domains, FA
714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the
operation of a commercial web directory displaying various links to third-party
websites was not a use in connection with 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), as the respondent presumably earned
“click-through” fees for each consumer it redirected to other websites); see also St. Lawrence Univ. v.
Nextnet Tech, FA
881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or
confusingly similar domain name to earn click-through fees via sponsored links
to a complainant’s competitors 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)).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name, which was registered on
March 14, 2009, resolves to a corresponding website that provides parked
advertisements for Complainant’s competitors and other third parties. Internet users who are attempting to reach
Complainant would be diverted to this website and be confronted with links for
businesses that compete with Complainant.
The Panel therefore finds that Respondent has engaged in bad faith
registration and use of the disputed domain name under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. See
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining
“competitor” as “one who acts in opposition to another and the context does not
imply or demand any restricted meaning such as commercial or business
competitor”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business).
Respondent presumably gains
commercial revenue from this display of referral links. Respondent has therefore created a
substantial likelihood of confusion as to Complainant’s source, endorsement,
affiliation, and sponsorship of the disputed domain name and corresponding
website. The Panel thus finds that
Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb.
16, 2007) (“The Panel finds such use to constitute bad faith registration and
use pursuant to Policy ¶ 4(b)(iv), because
[r]espondent is taking advantage of the confusing similarity between the
<metropolitanlife.us> domain name and Complainant’s METLIFE mark in order
to profit from the goodwill associated with the mark.”); see also MySpace, Inc. v.
Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that
the respondent registered and used the <myspacebot.com> domain name in
bad faith by diverting Internet users seeking the complainant’s website to its
own website for commercial gain because the respondent likely profited from
this diversion scheme).
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 <mobiltravelclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 11, 2009
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