Holly Corporation and Frontier Oil Corporation and Frontier Refining & Marketing Inc. v. Charles Zwirtz
Claim Number: FA1106001395029
Complainant is Holly Corporation and Frontier Oil Corporation and Frontier Refining & Marketing Inc. (“Complainant”), represented by Julianna P. Deligans of Hall Estill P.C., Oklahoma, USA. Respondent is Charles Zwirtz (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hollyfrontiercorporation.net>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <hollyfrontiercorporation.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 June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@hollyfrontiercorporation.net. Also on June 23, 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 July 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <hollyfrontiercorporation.net> domain name is confusingly similar to Complainant’s HOLLY mark.
2. Respondent does not have any rights or legitimate interests in the <hollyfrontiercorporation.net> domain name.
3. Respondent registered and used the <hollyfrontiercorporation.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Panel finds that Complainants have demonstrated a sufficient nexus to be treated as a single entity and will be referred to collectively as “Complainant” throughout this decision.
Complainant, Holly Corporation, Frontier Oil Corporation, and Frontier Refining & Marketing Inc., provides gasoline and fuel goods, petroleum refining services, and advertising, marketing, and promotional services for the refined products of others. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the HOLLY mark:
Reg. No. 3,281,875 registered August 21, 2007 and
Reg. No. 3,282,206 registered August 21, 2007.
Complainant also owns a USPTO trademark registration for the FRONTIER mark (Reg. No. 673,081 registered January 27, 1959).
Respondent, Charles Zwirtz, registered the <hollyfrontiercorporation.net> domain name on February 22, 2011. The disputed domain name is not presently being used to display any active, original content.
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.
Complainant owns USPTO trademark registrations for the HOLLY mark:
Reg. No. 3,281,875 registered August 21, 2007 and
Reg. No. 3,282,206 registered August 21, 2007.
Based on these USPTO trademark registrations, the Panel concludes that Complainant has rights in the HOLLY mark for the purposes of Policy ¶ 4(a)(i). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant also owns a USPTO trademark registration for the FRONTIER mark (Reg. No. 673,081registered January 27, 1959). The Panel determines that this federal trademark registration supplies sufficient evidence of Complainant’s rights in the FRONTIER mark to satisfy Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant alleges that Respondent’s <hollyfrontiercorporation.com> domain name is confusingly similar to Complainant’s HOLLY mark because the disputed domain name combines Complainant’s HOLLY mark with another of Complainant’s marks, FRONTIER, and adds the generic term “corporation” and the generic top-level domain (“gTLD”) “net.” The Panel finds that combining two of Complainant’s marks does not alleviate confusing similarity and may even serve to increase the confusion. See Yahoo! Inc. v. Domain Contact 3, FA 1222420 (Nat. Arb. Forum Oct. 13, 2008) (holding that the <hotjobsyahoo.com> domain name is confusingly similar to Complainant’s HOTJOBS mark because the disputed domain name merely combined Complainant’s HOTJOBS mark with Complainant’s YAHOO! mark); see also Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”). The Panel also finds that adding a generic term like “corporation” serves no differentiating function under Policy ¶ 4(a)(i). See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also 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). Finally, the Panel holds that the attached gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel accordingly finds that Respondent’s <hollyfrontiercorporation.net> domain name is confusingly similar to Complainant’s HOLLY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In making its case against Respondent, Policy ¶ 4(a)(ii) mandates that Complainant present a sufficient prima facie case against Respondent before the burden to prove rights and legitimate interests shifts to Respondent. Complainant has satisfied this burden and thus Respondent is now responsible for demonstrating its rights and legitimate interests. Respondent defaulted, however, which allows the Panel to infer that Respondent does not contest Complainant’s allegations and that Respondent does not possess rights and legitimate interests in the disputed domain name. See Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will still consider the evidence in the record against the Policy ¶ 4(c) factors, however, to make a complete analysis of Respondent’s rights and legitimate interests.
Complainant asserts that Respondent is not commonly known by the <hollyfrontiercorporation.com> domain name. The WHOIS information for the disputed domain name indicates that “Charles Zwirtz” is the registrant, a name which has no facial association to the disputed domain name. The Panel accordingly concludes that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests. See 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); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent is not using the <hollyfrontiercorporation.net> domain name in connection with any active purpose. The Panel finds that Respondent’s failure to actively use the disputed domain name reveals a lack of rights and legitimate interests on the part of Respondent according to Policy ¶ 4(a)(iii) as it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant also argues that Respondent is offering the <hollyfrontiercorporation.net> domain name for sale through the registrar’s Domain Buy Service. The Panel finds that this offer to sale the disputed domain name also reveals a lack of rights and legitimate interests on the part of Respondent under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent is attempting to sell the <hollyfrontiercorporation.net> domain name through the registrar’s Domain Buy Service. The Panel finds that such an effort to sell the disputed domain name shows that Respondent registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”; see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant asserts that Respondent is not using the <hollyfrontiercorporation.net> domain name to display any active content. As Respondent is failing to make any actual use of the disputed domain name, the Panel accordingly finds bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant also alleges that the timing and circumstances of Respondent’s registration of the <hollyfrontiercorporation.net> domain name indicate opportunistic bad faith registration. Complainant announced its merger on February 22, 2011, and Respondent registered the disputed domain name the very same day. Complainant argues that such timing cannot be mere coincidence. The Panel accordingly determines that Respondent’s registration of the <hollyfrontiercorporation.net> domain name supports a finding of opportunistic bad faith registration pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
The Panel finds 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 <hollyfrontiercorporation.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 22, 2011
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