Exxon Mobil Corporation v. Edmund Lee
Claim Number: FA1108001403172
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Valerie Verret of Baker Botts L.L.P., Texas, USA. Respondent is Edmund Lee (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxoncreditcard.net>, registered with Name.com LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 15, 2011.
On August 16, 2011, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <exxoncreditcard.net> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.com LLC 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@exxoncreditcard.net. Also on August 16, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <exxoncreditcard.net> domain name is confusingly similar to Complainant’s EXXON mark.
2. Respondent does not have any rights or legitimate interests in the <exxoncreditcard.net> domain name.
3. Respondent registered and used the <exxoncreditcard.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, markets, sells, and distributes petroleum and chemical products and services under its EXXON mark. Complainant also promotes and offers its credit card services under the EXXON mark, through its licensee Citibank, N.A. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”), the European Union’s Office for Harmonization in the Internal Market (“OHIM”), and IP Australia for its EXXON and related marks:
USPTO
EXXON (Reg. No. 902, 044 registered November 10, 1970)
EXXONMOBIL (Reg. No. 2,510,978 registered November 20, 2001)
EXXONMOBIL (Reg. No. 2,605,247 registered August 6, 2002)
EXXONMOBIL (Reg. No. 3,842,782 registered August 31, 2010)
OHIM
EXXON (Reg. No. 145,375 registered October 16, 1998)
EXXONMOBIL (Reg. No. 1,273,879 registered January 18, 2001)
IP Australia
EXXON (Reg. No. 337,237 registered August 30, 1979)
EXXONMOBIL (Reg. No. 809,004 registered January 8, 2001)
Respondent, Edmund Lee, registered the <exxoncreditcard.net> domain name on July 17, 2011. The disputed domain name resolves to a website that contains hyperlinks to third-party competitors of Complainant in the credit card industry.
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 alleges that it has established Policy ¶ 4(a)(i) rights in its EXXON and related marks and provides the foregoing evidence of its trademark registrations with the USPTO, OHIM, and IP Australia. The Panel concludes that this evidence of trademark registrations is sufficient proof that Complainant owns rights in its EXXON and related marks under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also American Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant contends that Respondent’s <exxoncreditcard.net> domain name is identical or confusingly similar to Complainant’s EXXON mark. Complainant notes that the disputed domain name attaches the descriptive terms “credit” and “card” and the generic top-level domain (“gTLD”) “.net” to Complainant’s EXXON mark. The Panel finds that the addition of descriptive terms and the gTLD fail to sufficiently distinguish the disputed domain name from Complainant’s mark, rendering the <exxoncreditcard.net> domain name confusingly similar under Policy ¶ 4(a)(i). See American Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); 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); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <exxoncreditcard.net> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a 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 <exxoncreditcard.net> domain name. 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). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues that Respondent is not commonly known by the <exxoncreditcard.net> domain name. Complainant asserts that it has not granted Respondent permission to use Complainant’s EXXON mark and has never authorized Respondent to market, promote, or offer any of Complainant’s products or services. The WHOIS information identifies the domain name registrant as “Edmund Lee,” which the Panel determines is not similar to the <exxoncreditcard.net> domain name. The Panel has examined the record and has failed to find any evidence that Respondent is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant contends that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <exxoncreditcard.net> domain name under Policy ¶ 4(c)(iii). According to Complainant, Respondent uses the disputed domain name to offer hyperlinks that resolve to Complainant’s third-party competitors in the credit card industry. Complainant provides screen shots of the resolving website and the Panel agrees with Complainant’s evaluation of Respondent’s use. Consequently, the Panel holds that Respondent is making neither a bona fide offering of goods nor services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent registered and uses the <exxoncreditcard.net> domain name in bad faith because Respondent is attempting to disrupt Complainant’s business. Complainant alleges that the <exxoncreditcard.net> domain name “resolves to a website purporting to offer information regarding EXXON credit cards and provides links to third parties offering competing credit card services.” Complainant’s screen shots support this assertion. The Panel finds that such a use does disrupt Complainant’s business, which constitutes 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 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 further alleges that Respondent is diverting Internet users to its website for commercial gain by creating confusion as to Complainant’s affiliation with the <exxoncreditcard.net> domain name. As Respondent is using the confusingly similar <exxoncreditcard.net> domain name to redirect Internet users to hyperlinks for commercial websites that offer credit card services in direct competition with Complainant, the Panel holds that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also 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.’”).
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 <exxoncreditcard.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 15, 2011
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