national arbitration forum

 

DECISION

 

Exxon Mobil Corporation v. Giorgi Javakhishvili

Claim Number: FA1107001400369

 

PARTIES

Complainant is Exxon Mobil Corporation (“Complainant”), represented by Valerie Verret of Baker Botts L.L.P., Texas, USA.  Respondent is Giorgi Javakhishvili (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <exxonmobilcreditcards.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 conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2011; the National Arbitration Forum received payment on July 27, 2011.

 

On July 27, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonmobilcreditcards.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 August 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@exxonmobilcreditcards.net.  Also on August 1, 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 August 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard  as sole Panelist in this proceeding.

 

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:

 

Complainant is the owner of the EXXONMOBIL trademark, registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 2,510,978, registered November 20, 2001.

 

The EXXONMOBIL mark is used in connection with the marketing of a variety of products and services, including industrial oils and greases, polymers for use in manufacture, petroleum and petroleum products, and credit card services.

 

Respondent registered the disputed domain name on June 30, 2011.

 

The <exxonmobilcreditcards.net> domain name resolves to a website which purports to offer information regarding Complainant’s credit card services and displays links to competing services.

 

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

 

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

 

Respondent registered and uses the <exxonmobilcreditcards.net> domain name in bad faith.

 

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

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the EXXONMOBIL trademark under Policy ¶ 4(a)(i) by reason of the registration of the mark with a national trademark authority, the USPTO.  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that complainants had established rights in marks where the marks were registered with a trademark authority).

 

The <exxonmobilcreditcards.net> domain name is confusingly similar to Complainant’s EXXONMOBIL mark. The disputed domain name fully incorporates the mark, with the addition of the descriptive terms “credit” and “cards,” which together describe aspects of Complainant’s business, and of the generic top-level domain “.net.”  These alterations of the mark do not distinguish the resulting domain name from the mark under the standards of the Policy.  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> was confusingly similar to the SUTTON mark because the addition of descriptive elements to the distinctive element in a mark is immaterial to the analysis under Policy ¶ 4(a)(i)).  

 

Similarly, the addition of a generic top-level domain (“gTLD”) to the mark of another in forming a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), and Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).

 

Therefore, the Panel finds that Respondent’s <exxonmobilcreditcards.net> domain name is confusingly similar to Complainant’s EXXONMOBIL trademark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under this head of the Policy, Complainant must make out a prima facie case in support of the assertion that Respondent lacks rights to or legitimate interests in the contested domain name.  Thereupon, the burden shifts to Respondent to provide evidence showing that it has such rights or interests.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant on the point of a respondent’s lack of rights to or legitimate interests in a contested domain name, the burden shifts to that respondent to demonstrate its rights or legitimate interests in the disputed domain name; to the same effect, see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).

 

Complainant has made out the requisite prima facie case on the question of Respondent’s rights to and legitimate interests in the contested domain.  For this reason, and because Respondent has failed to respond to the Complaint filed in this proceeding, we are free to conclude that it has no rights to or legitimate interests in the disputed domain name.  See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce evidence bearing on its rights to or interests in a disputed domain name permitted an inference on that point in favor of a complainant); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003):

 

A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.

 

Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed <exxonmobilcreditcards.net> domain name which are cognizable under the Policy.

 

We first note that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is in no way connected to Complainant or its marks, and that Respondent’s use of Complainant’s marks is unauthorized.  Moreover, the WHOIS record for the <exxonmobilcreditcards.net> domain name identifies the registrant only as “Giorgi Javakhishvili,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name and so has failed to demonstrate that it has rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in the domain under  Policy ¶ 4(c)(ii), where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name);  see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <exxonmobilcreditcards.net> domain name is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) in that the domain resolves to a website displaying links to websites providing services that compete with Complainant’s business.  We concur.  See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):

 

Respondent is using the … domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does 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).

 

To the same effect, see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002). 

 

The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

It is evident that Respondent registered and uses the contested domain name in order to disrupt the business of Complainant.  This is evidence that Respondent registered and uses the domain in bad faith within the contemplation of 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 domain name which was confusingly similar to the mark of a complainant to attract Internet users to a directory website containing links to the websites of that complainant’s commercial competitors represented bad faith registration and use of the domain under Policy ¶ 4(b)(iii));  see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a search engine with links to, among others, websites featuring the products of that complainant’s commercial competitors).

 

It is likewise evident that Respondent’s registration and use of the disputed domain name, which is confusingly similar to Complainant’s EXXONMOBIL trademark, has been done to take advantage of the likelihood of confusion it would cause among Internet users to the ultimate benefit of Respondent, through the receipt of click-through or similar fees tracing to the visits of users to the websites associated with the links displayed on the resolving website.  This is evidence of bad faith registration and use of the domain pursuant to Policy 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), finding bad faith in circumstances in which a respondent takes advantage of a likelihood of confusion where a disputed domain name which is confusingly similar to the mark of a complainant resolves to a website displaying links to websites which compete with the business of that complainant.

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

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

 

 

Terry F. Peppard , Panelist

Dated:  August 31, 2011

 

 

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