Chevron Intellectual Property LLC v. Li Jie
Claim Number: FA1109001407584
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Li Jie (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usachevron.com>, registered with Xiamen ChinaSource Internet Service Co.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the National Arbitration Forum received payment on September 15, 2011. The Complaint was submitted in both Chinese and English.
On September 16, 2011, Xiamen ChinaSource Internet Service Co. confirmed by e-mail to the National Arbitration Forum that the <usachevron.com> domain name is registered with Xiamen ChinaSource Internet Service Co. and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co. has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co. 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 20, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 11, 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@usachevron.com. Also on September 20, 2011, the Chinese language 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usachevron.com> domain name is confusingly similar to Complainant’s CHEVRON mark.
2. Respondent does not have any rights or legitimate interests in the <usachevron.com> domain name.
3. Respondent registered and used the <usachevron.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chevron Intellectual Property LLC, uses its CHEVRON mark to market gasoline, lubricants, operating service stations, financial services, and credit card services. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CHEVRON mark (e.g., Reg. No. 364,683 registered August 23, 1937).
Respondent, Li Jie, registered the <usachevron.com> domain name on October 22, 2010. The disputed domain name resolves to a website in Chinese that displays a login page for Respondent’s e-mail service that is unrelated to Complainant’s business.
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 rights in its CHEVRON mark by registering the mark with the USPTO (e.g., Reg. No. 364,683 registered August 23, 1937). A USPTO trademark registration establishes rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Respondent resides or operates in China and not the United States. A trademark registration is not required to be in the country that a respondent resides or operates in. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel concludes that Complainant has established rights in its CHEVRON mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that the <usachevron.com> domain name is confusingly similar to Complainant’s CHEVRON mark. The disputed domain name contains a combination of Complainant’s CHEVRON mark with the geographic abbreviation “usa” and the generic top-level domain (“gTLD”) “.com.” The additions of a geographic term and a gTLD fail to differentiate a disputed domain name from a complainant’s mark. See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also 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). Therefore, the Panel finds that Respondent’s <usachevron.com> domain name is confusingly similar to Complainant’s CHEVRON mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <usachevron.com> domain name. The burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. A respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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 contends that Respondent is not commonly known by the <usachevron.com> domain name because Complainant has not authorized Respondent to use Complainant’s CHEVRON mark. Respondent has not presented any evidence that it is commonly known by the disputed domain name. The WHOIS information identifies the domain name registrant as “Li Jie,” which is not similar to the <usachevron.com> domain name. Given the WHOIS information, Respondent is not commonly known by the by the usachevron.com> domain name under Policy ¶ 4(c)(ii). See 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.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <usachevron.com> domain name. The disputed domain name resolves to a website that serves as a login page for Respondent’s e-mail service. Respondent commercially profits from this use by offering e-mail services and user@usachevron.com e-mail addresses. The Panel finds that Respondent is making neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <usachevron.com> domain name pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does 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 Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use of the <usachevron.com> domain name disrupts Complainant’s business. However, Complainant does not show that it is in the business of offering e-mail services to Internet users and that Respondent’s offering of e-mail services competes with Complainant. Because Complainant does not provide this information and evidence, the Panel concludes that Complainant has not demonstrated Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant does not make any specific arguments under Policy ¶ 4(b)(iv). However, Complainant claims that Respondent commercially gains from the registration and use of the disputed domain name to offer e-mail services and the user@usachevron.com e-mail addresses. A respondent’s registration and use of a disputed domain name to commercially gain by providing unrelated services is evidence of bad faith registration and use. 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel finds that Respondent registered and uses the <usachevron.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent is attempting to pass itself off as Complainant on the website resolving from the <usachevron.com> domain name because Respondent is selling user@usachevron.com e-mail addresses. The Panel determines that there is insufficient evidence that Respondent itself is attempting to pass itself off because Internet users, not Respondent, would be operating the user@usachevron.com e-mail addresses. Therefore, the Panel fails to find bad faith registration and use in this scenario.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usachevron.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 31, 2011
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