ChevronTexaco Corporation v. Bela Lakatos
Claim Number: FA0302000144608
PARTIES
Complainant
is ChevronTexaco, San Ramon, CA, USA
(“Complainant”). Respondent is Bela Lakatos, Szekesfehervar, II,
Hungary (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <chevrontexaco.info>
and <chevrontexaco.org>, registered with Verisign, Inc. and Network Solutions, Inc.
PANEL
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.
David
P. Miranda, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 4, 2003; the Forum received a hard copy of the
Complaint on February 6, 2003.
On
February 10, 2003 and February 11, 2003, Verisign, Inc. and Network Solutions,
Inc. confirmed by e-mail to the Forum that the domain names <chevrontexaco.info> and <chevrontexaco.org> are registered with Verisign, Inc. and
Network Solutions, Inc. and that the Respondent is the current registrant of
the names. Verisign, Inc. and Network
Solutions, Inc. have verified that Respondent is bound by the Verisign, Inc.
and Network Solutions, Inc. registration agreement and have thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
February 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 5, 2003 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@chevrontexaco.info and
postmaster@chevrontexaco.org by e-mail.
A
timely Response was received and determined to be complete on February 28, 2003.
Complainant’s
additional submission was timely received on March 5, 2003.
Respondent’s
additional submission was timely received on March 8, 2003.
On March 17, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed David P.
Miranda, Esq., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant contends that it is the owner
of the name and trademark CHEVRONTEXACO which
was adopted October 9, 2001, the effective date of the merger of Texaco, Inc.
into Chevron Corporation. Complainant
is the owner of 44 federal trademark registrations for CHEVRON, used to
identify goods and services dating back as early as 1935, and 54 trademark
registrations for TEXACO, used to identify goods and services since at least as
early as 1903. Complainant claims a
date of first use of the mark CHEVRONTEXACO since at least as early as October
16, 2000, in a press release regarding the merger of the two former
companies. Complainant contends that as
a result of the merger, it is the nation’s third largest producer of oil and
gas with a value of more than 100 billion dollars. Complainant contends that domain names at issue, <chevrontexaco.org> and <chevrontexaco.info>, are
identical and confusingly similar to Complainant’s trademarks. Complainant contends that Respondent has no
rights or legitimate interests in the domain names that are the subject of the
Complaint. Respondent has never been
commonly known by the domain names and has not used them in connection with a
bona fide offering of goods or services.
Complainant contends the domain names in dispute have been registered
and are being used in bad faith because Respondent registered the domain names
in order to prevent Complainant from reflecting its mark in a corresponding
domain name; the Complainant is unable to identify its related charitable
organization at <chevrontexaco.org>; the
Respondent provided clearly erroneous information to the domain name registrar in its application to register <chevrontexaco.info> by claiming to be the owner of the US
trademark for the mark CHEVRONTEXACO, when in fact, it was not; and Respondent
registered the domain names with the intention of directing to Respondent’s
websites people who think they are accessing the official authorized
CHEVRONTEXACO website.
B.
Respondent
Respondent
concedes that the domain names in dispute are identical to Complainant’s
present trademark CHEVRONTEXACO and contain Complainant’s prior federally
registered trademarks to CHEVRON and TEXACO.
Respondent contends that in the period in which the domain registration
occurred, he made several U.S. and European trademark searches on the web, and
was not aware that the trademark CHEVRONTEXACO existed at that time. Respondent further contends that Complainant
did not even exist until the merger took place on October 9, 2001, which was
approximately one month after the registration. Respondent concedes that he is an individual by the name of Bela
Lakatos and has never been commonly known by the domain names in dispute. Respondent contends that he did not have an
intent to tarnish the trademark or service marks at issue. Respondent contends that his good faith
intent with respect to the registration and use of the domain names is
evidenced by a warning placed on the site that reads “Warning: This is not an official site of
ChevronTexaco Corporation.” Respondent
contends that his registration and use of the domain names was not in bad
faith, but rather because the words “contained a reference to global oil
issues, concerns and businesses.” At
the time he registered the domain name, it was not a legal certainty that the
new company name following the merger would in fact be called
CHEVRONTEXACO. Respondent denies that
he committed trademark fraud and contends that he is not the trademark owner of
CHEVRONTEXACO and never represented in any application for registration that he
was the trademark owner. He contends
that the information contained in the Whois data base is incorrect. Respondent also contends that there is no
proof that his registration and use of the domain names is primarily for the
purpose of competition with the Complainant or for Respondent’s own commercial
gain.
C.
Additional Submissions
Both
Complainant and Respondent made additional submissions, all of which were
accepted and considered by the Panel.
Complainant contends that Respondent’s use of the websites has caused
actual confusion in the industry and submits evidence showing at least three
separate instances of actual confusion.
Complainant also submits proof of a public announcement of its use of
the CHEVRONTEXACO name and mark at least as early as October 16, 2000, prior to
Respondent’s registration of the domains.
Respondent contends that he was unaware of Complainant’s intended use of
the mark at the time he registered the mark.
FINDINGS
Complainant has established that the
domain name <chevrontexaco.org> and <chevrontexaco.info>
is identical or confusingly similar to its registered trademarks CHEVRON and
TEXACO and its common law mark CHEVRONTEXACO; that
Respondent has
no rights or legitimate interests in the domain names; and that Respondent’s
registration and use of the domain names is in bad faith, thus warranting
transfer of <chevrontexaco.org> and <chevrontexaco.info> to the
Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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
is the owner of the name and trademark CHEVRONTEXACO, which was adopted and
first used on October 9, 2001, the effective date of the merger of Texaco Inc.
into Chevron Corporation. Complainant
asserts that the CHEVRONTEXACO mark has no meaning outside of Complainant’s
operations. See McCarthy on Trademarks and Unfair
Competition, § 25:74.2, Vol. 4 (2000) (the ICANN dispute resolution policy
is “broad in scope” in that “the reference to a trademark or service mark ‘in
which the complainant has rights’ means that ownership of a registered mark is
not required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy).
Respondent’s <chevrontexaco.org> and <chevrontexaco.info>
domain names are identical to the CHEVRONTEXACO mark. Respondent’s domain names deviate from the CHEVRONTEXACO mark
only with the addition of the top-level domains “.info” and “.org.” Such elements are non-distinctive. 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); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr.
30, 2001) (finding that <mysticlake.net> is plainly identical to
Complainant’s MYSTIC LAKE trademark and service mark); see also ViewSonic Corp. v. Informer Assoc. Inc.,
D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names
<viewsonic.net> and <viewsonic.org> are identical to Complainant’s
VIEWSONIC mark).
Respondent’s
domain names are confusingly similar to Complainant’s CHEVRON and TEXACO
registered marks because the domain names are merely a combination of the two
marks, both of which are owned by Complainant both individually and collectively. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where Respondent combined Complainant’s POKEMON
and PIKACHU marks to form the <pokemonpikachu.com> domain name).
Complainant also has common law trademark
rights in the CHEVRONTEXACO mark. See
British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting
that the Policy “does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names” and applying the Policy to “unregistered trademarks and service marks”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the
Uniform Domain Name Dispute Resolution Policy does not require “that a
trademark be registered by a governmental authority for such rights to exist”).
Complainant has established sufficient
secondary meaning associated with the mark CHEVRONTEXACO for it to be entitled
to trademark rights under the common law.
Complainant is the third largest gas and oil company in the nation with
a value in excess of 100 billion dollars.
Respondent concedes that “Complainant is a world famous integrated oil
company” and it does not contest the fame or notoriety of the mark. Respondent does contend, however, that U.S.
legal standards as they apply to trademark law should not be applicable to him
because he resides in Hungary, which follows a different legal system. Respondent’s claim that a different legal
standard should apply fails, because he does not submit any representation as
to what the legal standard is in Hungary or how it is different from the U.S.
standard. Respondent cites only to United States legal cases in support of his
position and Respondent registered the domain names through Verisign and
Network Solutions, based in the United States.
Thus, there is no basis for applying a different legal standard in this
case.
Thus, the Panel finds that Complainant
has established Policy ¶ 4(a)(i).
Respondent has not made demonstrable
preparations to use the domain names in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). Complainant states that the
domain names resolve to a website that purports to provide a moderated forum
for independent and unbiased comments and opinions, yet actively displays
disparaging comments about Complainant and its officers. Although Respondent’s alleged purpose for
the domain names may be legitimate, Respondent does not have a right to
identify itself as Complainant. See Robo Enter., Inc. v. Tobiason, FA 95857
(Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or
legitimate interest in the domain name <roboenterprises-investors.com>,
noting that while the content of Respondent’s website may enjoy First Amendment
and fair use protection, those protections do not create rights or a legitimate
interest with respect to a domain name which is confusingly similar to
another’s trademark); see E.
& J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate
free speech/complaint site does not give rights to use a famous mark in its
entirety); see also Weekley Homes,
L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001)
(finding that establishment of a website containing criticism is not a
legitimate use of the <davidweekleyhome.com> domain name because the
disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY
HOMES mark); see also Name.Space Inc. v. Network Solutions, 202 F.3d
573, 585 (2d Cir. 2000) (although the content of Respondent’s site may be
entitled to First Amendment protection, Respondent’s use of Complainant’s
trademark in the domain name of its site is not protected. Since Respondent’s domain name merely
incorporates Complainant’s trademark, it does not constitute a protectable,
communicative message).
Respondent concedes that neither he nor
his business has never been commonly known by the domain names and that he is
instead known as Bela Lokatos. The
CHEVRONTEXACO mark uniquely identifies Complainant and its goods and services,
thereby creating the presumption that Respondent cannot establish rights in the
domain names under Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark).
In
addition, Complainant has submitted proof of several instances of actual
consumer confusion by individuals who are knowledgeable in the oil industry who
submitted correspondence and postings on Respondent’s website, believing that
the website was owned and operated by ChevronTexaco.
Respondent’s
use of disclaimers on the websites fails to cure the initial confusion that
Internet users face. See Alta Vista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not, accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”); see also DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the
domain name consists of Complainant’s well-known trademark, does not counter
the expectation of Internet users that the domain name is sponsored by
Complainant).
Thus, the Panel finds that Complainant
has established Policy ¶ 4(a)(ii).
The
evidence suggests Respondent registered the domain names to prevent
Complainant, the owner of the corresponding trademark, from reflecting the mark
in a domain name with the top-level domain of “.info” or “.org.” Complainant submits evidence that Respondent
provided clearly erroneous information to the Registrar in its application
where Respondent claimed to be the owner of U.S. Trademark Registration No.
12345, although no such registration exists.
Respondent contends that it did not represent that it was a trademark
holder of the marks in question and contends that the Whois information is
inaccurate. Respondent submits
documentation showing the effort he made to contact the Registrar to correct
the registration information after this proceeding was commenced. Although the Panel sympathizes with
Respondent’s inability to get Network Solutions to change the registrant
information, Respondent’s efforts after the issue had been raised in this
proceeding is not sufficient to overcome the evidence submitted by
Complainant. Respondent could have
submitted a copy of the actual registration materials submitted to the
Registrar or a correct confirmation of registration from Registrar, but failed
to do so.
Complainant
contends that Respondent registered the subject domain names “primarily for the
purpose of disrupting the business of a competitor,” which constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or demand any restricted
meaning such as commercial or business competitor”); cf. Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between Complainant and Respondent, Respondent likely registered
the contested domain name with the intent to disrupt Complainant's business and
create user confusion).
Despite
Respondent’s protestations that it had no idea that Complainant was going to
choose the name CHEVRONTEXACO for its merged company, Respondent admits that it
was fully aware that both marks were registered trademarks of the
Complainant. Further, proof submitted
by Respondent shows that he closely monitored and was fully aware of the merger
activities of the Complainant, and of the likelihood that CHEVRONTEXACO would
be used as Complainant’s name and mark.
There is sufficient proof that Respondent had knowledge of Complainant’s
trademarks at the time of his registration of the domain names.
Therefore, the Panel finds that
Respondent has registered and used the domain name in bad faith under Policy ¶
4(b)(ii). See Home Director, Inc. v. HomeDirector,
D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading
information in connection with the registration of the domain name is evidence
of bad faith); see also Harcourt,
Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the
burden imposed by the Policy ¶ 4(b)(ii)); see also YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent’s registration of two
domain names incorporating Complainant’s YAHOO! mark); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000)
(finding that registering multiple domain names in a short time frame
indicates an intention to prevent the mark holder from using its mark and
provides evidence of a pattern of conduct).
Thus, the Panel finds that Complainant
has established Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ordered that the domain names <chevrontexaco.org> and <chevrontexaco.info> be TRANSFERRED to
Complainant.
David P. Miranda, Esq., Panelist
Dated: March 31, 2003
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