Chevron Intellectual Property LLC v. Castor Consultancy / Ben Castor
Claim Number: FA1009001346590
Complainant is Chevron Intellectual Property LLC ("Complainant"), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Castor Consultancy / Ben Castor ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrondownstream.com>, registered with Register.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2010; the National Arbitration Forum received payment on September 16, 2010.
On September 16, 2010, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <chevrondownstream.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chevrondownstream.com. Also on September 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <chevrondownstream.com> domain name is confusingly similar to Complainant’s CHEVRON mark.
2. Respondent does not have any rights or legitimate interests in the <chevrondownstream.com> domain name.
3. Respondent registered and used the <chevrondownstream.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chevron Intellectual Property LLC, is an international provider, distributor, and seller of a wide range of products including gasoline, lubricants, operating service stations, financial services, and credit card services. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its CHEVRON mark (e.g., Reg. No. 364,683 issued February 14, 1939).
Respondent, Castor Consultancy / Ben Castor, registered the <chevrondownstream.com> domain name on May 10, 2010. Respondent’s disputed domain name previously resolved to a website that displayed a list of third-party hyperlinks to competitors of Complainant offering oil related goods. Respondent’s disputed domain name currently resolves to Complainant’s official <chevron.com> domain name.
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 submitted ample evidence to establish rights in its CHEVRON mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 364,683 issued February 14, 1939). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that the <chevrondownstream.com> domain name is confusingly similar to Complainant’s CHEVRON mark. Complainant notes that the disputed domain name contains its mark entirely while adding the descriptive term “downstream” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that the term “downstream” is used in the oil industry to indicate business that occurs after crude oil extraction is complete such as the transportation of petroleum through pipelines. The Panel finds that Respondent’s <chevrondownstream.com> domain name is confusingly similar to Complainant’s CHEVRON mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have rights and legitimate interests in the <chevrondownstream.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized or licensed Respondent to use the CHEVRON mark in any way. The WHOIS information for the disputed domain name identifies “Castor Consultancy / Ben Castor” as the registrant, and Respondent has not come forward with any evidence indicating that it is commonly known by the <chevrondownstream.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).
Complainant contends that Respondent previously used the disputed domain name as a commercial links directory that consisted of third-party hyperlinks to Complainant’s competitors in the oil industry. Complainant alleges that at some time between August 3, 2010 and September 10, 2010 Respondent changed the disputed domain name’s resolving website to that of Complainant’s official website. Complainant contends that Respondent’s former use of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s previous use of the disputed domain name to display a commercial links directory of competing companies in the oil industry is not 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Respondent’s disputed domain name currently resolves to Complainant’s official <chevron.com> website. Complainant contends that simply changing the resolving website to that of Complainant’s own official website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent’s current use of the disputed domain name to resolve to Complainant’s official website is not 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 Shutterfly.com v. Douglas, FA 1141116 (Nat. Arb. Forum March 25, 2008) ("Respondent’s disputed domain names all redirect Internet users to Complainant’s website… such use does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names"); see also Disney Enters., Inc. v. JalapenoWare, LLC, FA 1302464 (Nat. Arb. Forum Feb. 22, 2010) (finding no rights or legitimate interests where "disputed domain names are currently redirecting to Complainant’s web page in circumstances where Respondent has no business connection with Complainant and Complainant has not given any permission to Respondent to do so").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent previously used the disputed domain name to redirect Internet users to the websites and businesses of Complainant’s competitors in the oil industry. It may be inferred that such usage of a confusingly similar domain name results in a loss of and disruption to Complainant’s business and online presence. Therefore, the Panel finds that Respondent’s previous use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further argues that Respondent’s previous use of the disputed domain name not only resulted in Internet user confusion as to the source, sponsorship and affiliation of the website, but also resulted in commercial gain for Respondent through its use of click-through links and advertisements. Complainant contends that such use is further evidence of Respondent’s bad faith registration and use of the domain name. The Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant also alleges that Respondent, at some point between August 3, 2010 and September 10, 2010 Respondent changed the disputed domain name’s resolving website to that of Complainant’s official website. Complainant argues that Forum case law supports Complainant’s position that Respondent’s use of the disputed domain name to resolve to Complainant’s official website is evidence of bad faith registration and use. The Panel agrees and finds that Respondent’s current use of the disputed domain name to resolve to Complainant’s official website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); see also Disney Enters., Inc. v. JalapenoWare, LLC, FA 1302464 (Nat. Arb. Forum Feb. 22, 2010) ("Despite the fact that Respondent appears not to have put the disputed domain names to any active use, except to resolve to Complainant’s website, this Panel is satisfied that on the balance of probabilities the domain names were registered and are being used in order to take opportunistic and predatory advantage of Complainant’s reputation and goodwill in the DISNEY trademark.").
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 <chevrondownstream.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 26, 2010
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