ChevronTexaco Corporation v. Kent Tanik
Claim Number: FA0302000145788
PARTIES
Complainant
is ChevronTexaco Corporation, San
Ramon, CA (“Complainant”) represented by Mary
A. Francis, of ChevronTexaco Corporation. Respondent is H. Kent Tanik, Mountain View, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <chevrontexaco.biz>,
registered with Register.Com.
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.
Hon.
H. Curtis Meanor, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 14, 2003; the Forum received a hard copy of the
Complaint on February 18, 2003.
On
February 21, 2003, Register.Com confirmed by e-mail to the Forum that the
domain name <chevrontexaco.biz>
is registered with Register.Com and that the Respondent is the current
registrant of the name. Register.Com
has verified that Respondent is bound by the Register.Com registration
agreement and has 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 24, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 17, 2002 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.biz by e-mail.
A
timely Response was received and determined to be complete on March 12, 2003.
On March 20, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed H. Curtis Meanor
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
Complainant
is the owner of the trademark CHEVRON known globally for energy-related goods
and services, including vehicle fuels, lubricants and service station
services. Complainant has used the
trademark CHEVRON without interruption to identify goods and services in
commerce since at least as early as 1935. Complainant operates a public website
at <www.chevron.com>.
Complainant owns hundreds of registrations for the trademark CHEVRON
throughout the world. In the U.S.,
Complainant owns at least 44 federal trademark registrations on the Principal
Register for the trademark CHEVRON, most of which are incontestable under 15
U.S.C. § 1065. Complainant’s U.S.
registrations for the trademark CHEVRON constitute constructive notice of
Complainant’s claim of rights in the trademark CHEVRON. 15 U.S.C. § 1072.
Complainant,
through itself and wholly owned subsidiaries, is the owner of the trademark
TEXACO known throughout the world for energy-related goods and services,
including vehicle fuels, lubricants and service station services. Complainant has used the trademark TEXACO
without interruption to identify goods and services in commerce since at least
as early as 1903. Complainant operates
a public website at <www.texaco.com>.
Complainant owns hundreds of registrations for the trademark TEXACO
throughout the world. In the U.S.,
Complainant owns more than 50 federal trademark registrations on the Principal
Register for the trademark TEXACO, most of which are incontestable under 15
U.S.C. § 1065. Complainant’s U.S.
registrations for the trademark TEXACO constitute constructive notice of
Complainant’s claim of rights in the trademark TEXACO. 15 U.S.C. § 1072. The term TEXACO has no dictionary meaning and serves uniquely as
a trade name and trademark for Complainant’s products and services.
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. Since that
date, a date that precedes the date of registration of the domain name in
dispute, Complainant has used the CHEVRONTEXACO logotype and mark to identify
itself as a company and as the source of various energy-related products and
services. Complainant operates a public
website at <www.chevrontexaco.com>. The term CHEVRONTEXACO has no dictionary
meaning and serves uniquely as a trade name and trademark for Complainant’s
products and services.
B. Respondent
Respondent
admits that the name “chevrontexaco” is a trademark. He contends,
however, that his domain name ends with
the extension “.biz” and claims that the
entire domain name <chevrontexaco.biz>
as a whole word is not a trademark
belonging
to ChevronTexaco. The claim is that the
similarity between Respondent’s domain name and plaintiff’s registered
trademark is wholly coincidental.
Respondent
is a software engineer and states that he registered the domain name for the
sole purpose of selling services that have no direct or indirect connection
with the Complainant and its services and products. While Respondent admits that he has not used the domain name, he
has prepared for its use. Respondent says that starting July 4, 2003, he
intends to use the domain name to sell a language translation service in
preparation for the Diversity Visa Lottery, also known as the Green Card
Lottery. Respondent attaches documents
he has prepared showing his intent to use the domain name with respect to the
Green Card Lottery and to provide services with respect thereto in Turkey with
his promotional material both in English and the Turkish language. Respondent intends to use the domain name to
promote these services through the Internet.
Respondent states that the fact that he has not offered to sell his
domain name to Complainant is indicative of his good faith.
C. Additional Submissions
Complainant in an additional submission
notes that Respondent concedes that
“chevrontexaco” is a trademark. Complainant denies that the addition of the
suffix “.biz” indicates a lack of
identity between the domain name and
Complainant’s
trademark. Authority is cited to
support this proposition. Complainant
also notes that despite the asserted differences between its trademark and
Respondent’s domain name, they are at least confusingly similar. Complainant contends that the mark “chevrontexaco”
uniquely refers to the Complainant.
Complainant asserts that the Respondent’s claim that the similarity
between his domain name and Complainant’s trademark is wholly coincidental is
an “incredible assertion.”
FINDINGS
1.
Complainant
has met its burden to produce by a preponderance of the evidence that the
domain name at issue is identical to trademarks in which Complainant has
rights.
2.
Complainant
has met its burden to produce by a preponderance of the competent evidence that
Respondent has no rights or legitimate interest in respect to the domain name
at issue.
3. Complainant has met its burden to prove by a preponderance of
the evidence that the domain name at issue has been registered in bad faith.
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
holds a registered trademark for both CHEVRON and TEXACO with the United States
Patent and Trademark Office.
Complainant
asserts that Respondent’s <chevrontexaco.biz> domain name is
confusingly similar to Complainant’s two marks because it merely combines both
marks into one domain name and adds the
top-level domain “.biz.” The
combination of Complainant’s two famous marks does not create any distinct
characteristics because Internet users will still identify the disputed domain
name with Complainant. See Nintendo of Am. Inc. v. Pokemon,
D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the
Respondent combines the Complainant’s POKEMON AND PIKACHU marks to form the
“pokemonpikachu.com” domain name); see also Nintendo of Am. Inc. v. This Domain
Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding “gameboy.com”
identical and confusingly similar to the Complainant’s GAME BOY mark, even
though the domain name is a combination of two descriptive words).
Complainant
also notes that the addition of the top-level domain “.biz” does not add any
distinct
characteristics capable of overcoming a claim of confusing similarity. See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
“pomellato.com” identical to Complainant’s mark because the generic top-level
domain (gTLD) “.com” after the name POMMELLATO is not relevant); 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). Complainant is correct in asserting that
Respondent’s claim that the similarities between Complainant’s mark and his
domain name is purely coincidental is an “incredible assertion.”
The
above discussion makes it clear that despite the suffix “.biz” in Respondent’s
domain name, it is for present purposes identical to Complainant’s registered
mark CHEVRONTEXACO, which has been in use since the merger of Chevron and
Texaco in October, 2001 before Respondent registered his domain name in March,
2002.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii) because he has made no use of <chevrontexaco.biz>since
its registration in March 2002. This
behavior on the part of Respondent constitutes passive holding and therefore
does not give rise to rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Vestel Elektronik Sanayi v. Ticaret AS v. Kahveci, D2000-1244
(WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of paragraph
4(a)(ii) of the Policy”); see also
Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000)
(finding that failure to provide a product or service or develop the site
demonstrates that Respondents have not established any rights or legitimate
interests in the domain name).
Complainant
further argues that Respondent is not commonly known as CHEVRON, TEXACO,
CHEVRONTEXACO, or <chevrontexaco.biz> and therefore has no rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because
Respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use).
Registration
and Use in Bad Faith
Complainant
asserts that Respondent could only have registered the disputed domain name to
sell it to Complainant, because based on the fame of Complainant’s marks there
is no potential good faith use for the <chevrontexaco.biz> domain
name. Respondent registered the
disputed domain name with opportunistic bad faith. See Red Bull GmbH v. Gutch,
D2000-0766 9WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with Complainant, and thus is the equivalent to bad faith
use); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously
connected with Complainant and its products that the use of the domain names by
Respondent, who has no connection with Complainant, suggests opportunistic bad
faith).
Respondent
registered <chevrontexaco.biz> in bad faith because he was on
notice of Complainant’s rights when he registered the domain name. Complainant’s marks are famous; therefore,
it can be inferred that Respondent had actual notice of the existence of
Complainant’s rights. Registration of
an infringing domain name, despite actual notice, is evidence of bad faith
pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see
also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161
F. Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072). Respondent’s
argument that by not offering to sell his domain name to Complainant, he has
evidenced his good faith is of no avail.
Such an offer would be clear evidence of bad faith.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevrontexaco.biz>
domain name be TRANSFERRED from Respondent to Complainant.
HON.
H. CURTIS MEANOR
Panelist
DATED: March
26, 2003
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