Chevron Intellectual Property LLC v. Chevron Nigeria Limited
Claim Number: FA1208001459963
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Chevron Nigeria Limited (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrononline-ng.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 27, 2012; the National Arbitration Forum received payment September 6, 2012.
On August 28, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <chevrononline-ng.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@chevrononline-ng.com. Also on September 7, 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 October 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant owns numerous trademark registrations for the CHEVRON mark with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 364,683 registered February 14, 1939;
Reg. No. 416,133 registered August 28, 1945;
Reg. No. 521,956 registered March 7, 1950;
Reg. No. 575,408 registered June 9, 1953; &
Reg. No. 2,727,275 registered June 17, 2003.
2. Complainant is one of the world’s leading integrated energy companies with a global workforce.
3. Complainant uses its CHEVRON mark in all aspects of its business, including newspapers, magazines, television, and numerous domain names. One of the domain names owned by Complainant, <chevrononline.com>, is very similar to the disputed domain name.
4. Respondent registered the <chevrononline-ng.com> domain name February 12, 2012 using the name “Chevron Nigeria Limited.”
5. Although Complainant’s related company has used that exact name in Nigeria for years, Respondent is not an affiliated entity of Complainant and has falsely adopted this name.
6. Respondent has no authorization, consent, or approval to use Complainant’s name.
7. Although there is no website at the disputed domain name, registration of the disputed domain name allows Respondent to communicate with private persons and the public using e-mail addresses that falsely represent a connection and affiliation with Complainant.
8. The unauthorized registration of domain names incorporating famous company names to support the use of e-mail addresses by fictitious entities and anonymous persons ostensibly located in remote jurisdictions is an established accoutrement of consumer loan fraud.
9. Although some criminals and fraud artists may create a website using a counterfeit domain name for the purpose of consumer loan fraud, the absence of a website is an independent warning sign, especially when e-mails are received from senders who are, or who appear to be, located in Nigeria.
10. Respondent’s disputed domain name is identical to Claimant’s mark but for the addition of the word “online” followed by a hyphen, the letters “NG” (the country code for Nigeria), and the generic top-level domain (“gTLD”) “.com.”
11. Respondent has no right or legitimate interest in the disputed domain name and has no authorization or approval to use Complainant’s CHEVRON mark.
12. The lack of a website corresponding to the disputed domain name evidences a lack of any right or legitimate interest as Respondent is making neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii).
13. Respondent is not commonly known by any name that includes Complainant’s CHEVRON mark.
14. Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because there is no colorable rationale for use and registration of the disputed domain name other than to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark and Complainant itself.
Complainant established that it has rights in the mark used in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has not shown rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark and the Panel finds that Respondent has no such rights.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Complainant owns numerous trademark registrations for the CHEVRON mark with the USPTO, including the following:
Reg. No. 364,683 registered February 14, 1939;
Reg. No. 416,133 registered August 28, 1945;
Reg. No. 521,956 registered March 7, 1950;
Reg. No. 575,408 registered June 9, 1953; &
Reg. No. 2,727,275 registered June 17, 2003.
Previous panels have determined that registration of a mark with the USPTO is sufficient to establish rights in a mark, even when a respondent is located outside the U.S. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); 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). The Panel accordingly concludes that Complainant has proven its rights in the CHEVRON mark under Policy ¶ 4(a)(i).
Complainant asserts that the <chevrononline-ng.com> domain name is identical to Complainant’s CHEVRON mark but for the addition of the word “online” followed by a hyphen, the letters “ng” (country code for Nigeria), and the gTLD “.com.” Complainant alleges that these additions do not diminish a likelihood of confusion. The Panel finds that Respondent’s <chevrononline-ng.com> domain name is confusing similar to Complainant’s CHEVRON mark for the purpose of Policy ¶ 4(a)(i). See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant contends that Respondent registered the disputed domain name under the name “Chevron Nigeria Limited.” Complainant argues that this name is the exact name that Complainant’s related company in Nigeria has used for years, but that Respondent is not affiliated with Complainant. Complainant asserts that Respondent has falsely adopted this name despite its lack of authorization, consent, or approval to use Complainant’s mark. Based on these arguments, the Panel finds that Respondent is not commonly known by the disputed domain name according to Policy ¶ 4(c)(ii) despite the WHOIS information that appears to indicate that Respondent is commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
Complainant first argues that Respondent’s <chevrononline-ng.com> domain name does not resolve to a functioning website. The Panel finds that this failure to actively use the disputed domain name indicates a lack of rights and legitimate interests under Policy ¶ 4(a)(ii) as it shows no bona fide offering of goods or services and no legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant also asserts that, although no website exists at the disputed domain name, the disputed domain name allows Respondent to communicate with private persons and the public using e-mail addresses that falsely purport to show a connection and affiliation with Complainant. Complainant further contends that the unauthorized registration of a domain name incorporating famous company names to support the use of e-mail addresses by fictitious entities and anonymous persons ostensibly located in remote jurisdictions is an established accoutrement of consumer loan fraud. Complainant alleges that, while some criminals and fraud artists may create a website using a counterfeit domain name for this purpose, the absence of a website is an independent warning sign, especially when e-mails are received from senders who are or who appear to be in Nigeria. The Panel finds that Respondent’s alleged activities at the disputed domain name are consistent with attempts to pass itself off as Complainant, which the Panel finds is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the dispute domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that, although no website is associated with the disputed domain name, registration of the disputed domain name allows Respondent access to e-mail addresses that falsely seek to purport a connection and affiliation with Complainant. Complainant argues that Respondent’s registration of the disputed domain name therefore enables Respondent to communicate with third parties for the purpose of consumer loan fraud. As a result, Complainant contends that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because no colorable rationale exists for use and registration of the disputed domain name other than to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(b)(iv). See 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).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <chevrononline-ng.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 16, 2012.
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