national arbitration forum

 

DECISION

 

Exxon Mobil Corporation v. Andres Martinez

Claim Number: FA1105001386948

 

PARTIES

Complainant is Exxon Mobil Corporation (“Complainant”), represented by Valerie Verret of Baker Botts L.L.P., Texas, USA.  Respondent is Andres Martinez (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <exxonmobilcreditcard.net>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Judge Ralph Yachnnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 3, 2011; the National Arbitration Forum received payment on May 5, 2011.

 

On May 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonmobilcreditcard.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 May 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2011 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@exxonmobilcreditcard.net.  Also on May 10, 2011, 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 June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <exxonmobilcreditcard.net> domain name is confusingly similar to Complainant’s EXXONMOBIL mark.

 

2.    Respondent does not have any rights or legitimate interests in the <exxonmobilcreditcard.net> domain name.

 

3.    Respondent registered and used the <exxonmobilcreditcard.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Exxon Mobil Corporation, is a global fuel and petroleum products company which also offers credit cards.  Complainant owns multiple trademark registrations for the EXXONMOBIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,510,978 issued November 20, 2001).  Complainant uses the mark to support, promote, and market its business throughout the world.

 

Respondent, Andres Martinez, registered the disputed domain name on September 16, 2010.  The disputed domain name resolves to a website offering links to other credit card companies which directly compete with Complainant’s own credit card offerings.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant is attempting to assert its rights in the EXXONMOBIL mark based upon its trademark registrations issued by the USPTO for the mark.  Previous panels have determined that registering a mark with the USPTO confers defendable rights to the registrant of the mark.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Therefore, the Panel finds that Complainant has established its rights in the EXXONMOBIL mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No. 2,510,978 issued November 20, 2001).

 

Complainant asserts that Respondent’s <exxonmobilcreditcard.net> domain name is confusingly similar to its own EXXONMOBIL mark.  The disputed domain name incorporates the entire mark while adding the terms “credit” and “card,” as well as, the generic top-level domain (“gTLD”) “.net.”  The Panel finds that the differences between the disputed domain name and Complainant’s mark do not sufficiently differentiate one from the other making the two confusingly similar under Policy ¶ 4(a)(i).  See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel finds that Complainant has met its initial burden of proof by making a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name.  The burden now lies with Respondent to prove that it has rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  Respondent in this matter has failed to file a response and therefore, the Panel is allowed to assume that its lacks rights or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, the Panel will still examine the entire record to determine whether Respondent has rights or legitimate interests in the mark according to the factors listed in Policy ¶ 4(c). 

Complainant asserts that Respondent is not commonly known by the <exxonmobilcreditcard.net> domain name.  Respondent has not provided any evidence to the Panel to support a finding that it is commonly known by the disputed domain name.  The WHOIS information identifies the registrant as “Andres Martinez.”  Based on the evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <exxonmobilcreditcard.net> domain name.  Respondent’s disputed domain name resolves to a site offering links to third-party websites, all of which offer credit card services that compete directly with Complainant’s own credit product offerings.  The Panel finds that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <exxonmobilcreditcard.net> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did 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 Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s use of the disputed domain name disrupts its business constituting bad faith registration and use.  Respondent’s disputed domain name resolves to a site offering links to third-party websites which offers credit cards products and services that compete directly with some of Complainant’s own products.  Internet users may get diverted to these linked sites and purchase or utilize credit products from one of Complainant’s competitors rather than Complainant.  The Panel finds that this use does disrupt Complainant’s business and is affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant claims that Respondent is gaining commercially from the operation of the disputed domain name constituting bad faith registration and use.  Respondent’s disputed domain name resolves to a site offering a list of links, many of which resolve to Complainant’s competitors.  Presumably, Respondent receives a fee for each Internet user diverted to these links by way of the confusingly similar to domain name.  The Panel find that this use does constitute bad faith registration and use under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <exxonmobilcreditcard.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: June 2, 2011

 

 

 

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