Chevron Intellectual Property LLC v. Above.com Domain Privacy
Claim Number: FA1207001451829
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrontexacodards.com>, registered with Above.com Pty Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 5, 2012; the National Arbitration Forum received payment on July 5, 2012.
On July 10, 2012, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <chevrontexacodards.com> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd 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 July 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 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@chevrontexacodards.com. Also on July 10, 2012, 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 August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following contentions:
1. Complainant registered the CHEVRONTEXACO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,935,173 registered March 22, 2005);
2. Respondent’s <chevrontexacodards.com> domain name is confusingly similar to Complainant’s CHEVRONTEXACO mark;
3.Respondent has no rights or legitimate interests in the disputed domain name;
4. The disputed domain name has been registered and is being used in bad faith;
5. Complainant registered the domain name <chevrontexacocards.com> to support its financial services business;
6. Respondent is not commonly known by the <chevrontexacodards.com> domain name;
7.Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
8.Respondent resolves the disputed domain name to a website offering pay-per-click links and advertisements for third-party companies, some of which offer competing credit card services;
9. Respondent is gaining commercially when Internet users searching for Complainant’s official website are diverted to Respondent’s website and then click on the links offered, capitalizing on Internet users’ mistakes.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant and its associated companies are part of a famous United States group of companies that for many years has been engaged in the petroleum and related industries and also in the provision of financial services including credit cards.
2. Complainant registered the CHEVRONTEXACO mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,935,173 registered March 22, 2005);
3. Respondent registered the disputed domain name on November 19, 2011. It resolves to a website offering pay-per-click links and advertisements for third-party companies, some of which offer competing credit card services to those of Complainant and its associated companies.
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."
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims to have registered the CHEVRONTEXACO mark with the USPTO (e.g., Reg. No. 2,935,173 registered March 22, 2005). Complainant submits multiple trademark certificates issued by the USPTO, which the Panel notes all include Complainant as the owner of the certificate provided. See Complainant’s Exhibits 2-9. Based upon the certificates provided, the Panel concludes that Complainant has established its rights in the CHEVRONTEXACO mark under Policy ¶ 4(a) (i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHEVRONTEXACO mark Complainant claims that Respondent’s <chevrontexacodards.com> domain name is confusingly similar to Complainant’s CHEVRONTEXACO mark. The Panel notes that the disputed domain name includes the entire mark, while adding the generic top-level domain (“gTLD”) “.com” and a misspelling of the generic word “card” as “dards.” As the Panel finds that Respondent failed to differentiate the disputed domain name from Complainant’s CHEVRONTEXACO mark sufficiently, the Panel finds that the domain name is confusingly similar under Policy ¶ 4(a) (i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEVRONTEXACO trademark and to use it in its domain name, adding the word “dards”, a misspelling of the generic word “cards”, clearly meaning credit cards;
(b) Respondent has then decided to use the domain name to resolve to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent is not commonly known by the <chevrontexacodards.com> domain name. The Panel notes that Respondent did not submit any evidence that would support a finding contrary to Complainant’s assertions. The Panel also notes that the WHOIS information identifies the registrant of the disputed domain name as “Above.com Domain Privacy.” Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name) ;
(e)Complainant also argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent resolves the disputed domain name to a website offering pay-per-click links and advertisements for third-party companies, some of which offer competing credit card services, like American Express and Visa. Based upon this use, the Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c) (i) and Policy ¶4(c) (iii), respectively. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent is gaining commercially when Internet users searching for Complainant’s official website are diverted to Respondent’s website and then click on the links offered, capitalizing on Internet users’ mistakes. Complainant states that Respondent resolves the disputed domain name to a website offering pay-per-click links and advertisements for third-party companies, some of which offer competing credit card services. Complainant states that when Internet users click on one of the links offered Respondent collects a small fee. Therefore, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as the Panel finds that Respondent created the website with the intention of commercially gaining from the confusion this diversion scheme would create. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHEVRONTEXACO mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevrontexacodards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 7, 2012
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