Exxon Mobil Corporation v. Donny Wells
Claim Number: FA1111001413634
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Valerie Verret of Baker Botts L.L.P., Texas, USA. Respondent is Donny Wells (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxoncreditcard.org>, registered with GoDaddy.com, Inc. (R91-LROR).
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2011; the National Arbitration Forum received payment on November 2, 2011.
On November 1, 2011, GoDaddy.com, Inc. (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <exxoncreditcard.org> domain name is registered with GoDaddy.com, Inc. (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, Inc. (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, Inc. (R91-LROR) 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@exxoncreditcard.org. Also on November 2, 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 November 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Respondent filed no Response. Respondent sent an e-mail to the Forum stating Respondent had no objection to transfer of the domain name.
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.org> domain name is confusingly similar to Complainant’s EXXON mark.
2. Respondent does not have any rights or legitimate interests in the <exxoncreditcard.org> domain name.
3. Respondent registered and used the <exxoncreditcard.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, provides business operation services, including the marketing, sale, and distribution of petroleum and chemical products. Complainant also provides credit card services. All of the services Complainant’s provides are offered under Complainant’s EXXON mark. Complainant owns multiple trademark registrations for its EXXON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 902,044 registered November 10, 1970).
Respondent, Donny Wells, registered the <exxoncreditcard.org> domain name on September 26, 2011. The disputed domain name resolves to a website that contains information about Complainant’s credit card.
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.
The Panel determines that Complainant has established Policy ¶ 4(a)(i) rights in its EXXON mark by virtue of its trademark registrations with the USPTO (e.g., Reg. No. 902,044 registered November 10, 1970). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also 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)).
The Panel finds that the <exxoncreditcard.org> domain name contains a combination of Complainant’s EXXON mark with the descriptive terms “credit card” and the generic top-level domain (“gTLD”) “.org.” As the Panel determines that such additions fail to adequately distinguish the disputed domain name, the Panel concludes that Respondent’s <exxoncreditcard.org> domain name is confusingly similar to Complainant’s EXXON mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant has contended that Respondent does not have any rights or legitimate interests in the <exxoncreditcard.org> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient 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 disputed 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 Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
The Panel notes that the WHOIS information identifies the domain name registrant as “Donny Wells.” Complainant claims that it has not granted permission to Respondent to use Complainant’s EXXON mark. The Panel further notes that Respondent has not presented evidence and has not made a Policy ¶ 4(c)(ii) claim. Thus, the Panel holds that Respondent is not commonly known by the <exxoncreditcard.org> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
The Panel analyzes the screen shots of the website resolving from the <exxoncreditcard.org> domain name and determines that Respondent is providing information about Complainant’s credit card services. Complainant asserts that Respondent is not authorized to provide this information and that the information provided by Respondent contains errors. The Panel finds that Respondent’s attempt to provide unauthorized information about Complainant’s products is evidence that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
As noted previously, Respondent uses the <exxoncreditcard.org> domain name to provide information about Complainant’s credit card services. Complainant argues that Respondent is not authorized to provide this information and that Respondent commercially benefits by attracting Internet users to the resolving website. The Panel concludes that Respondent is attempting to create some confusion as to Complainant’s affiliation with the resolving website by registering a confusingly similar domain name and using the domain name to provide information about Complainant’s credit card. As Respondent has not refuted Complainant’s assertion that it commercially benefits from the resolving website, the Panel determines that Respondent’s attempt to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name is evidence that Respondent registered and uses the <exxoncreditcard.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). 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).”).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the EXXON mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). In this case, the Panel determines that Respondent does have actual knowledge of Complainant’s EXXON mark, based on the content of the resolving website, and that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) is 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.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 6, 2011
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