Exxon Mobil Corporation v. amadi chibuike / exponentgroup
Claim Number: FA1209001462424
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Elizabeth Stanley of Baker Botts L.L.P., Texas, USA. Respondent is amadi chibuike / exponentgroup (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exonoilandgas.org>, registered with eNom, Inc. (R39-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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 13, 2012, eNom, Inc. (R39-LROR) confirmed by e-mail to the National Arbitration Forum that the <exonoilandgas.org> domain name is registered with eNom, Inc. (R39-LROR) and that Respondent is the current registrant of the name. eNom, Inc. (R39-LROR) has verified that Respondent is bound by the eNom, Inc. (R39-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 September 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@exonoilandgas.org. Also on September 17, 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 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is the owner of the EXXON (e.g., Reg. No. 902,044 registered Nov. 10, 1970) and EXXONMOBIL marks (e.g. Reg. No. 2,510,978 registered Nov. 20, 2001) with the United States Patent and Trademark Office ("USPTO").
Respondent’s <exonoilandgas.org> domain name is confusingly similar to Complainant’s EXXON marks. The disputed domain name removes the letter “x” from the mark, adds the descriptive terms “oil,” and “gas” as well as the connector “and,” and the generic top-level domain (“gTLD”) “.org.”
Respondent is not commonly known by the disputed domain name and has never been granted permission or authorized to use the EXXON marks.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent has merely copied the information of a third-party’s website, <suncor.com>, and substituted the third-party’s name for “Exon Oil and Gas.” Respondent is attempting to deceive Internet users as to the sponsorship of the website for some sort of commercial gain.
Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv), by attracting Internet users to its website for commercial gain by using a misspelling of Complainant’s mark.
Respondent’s general intent to deceive Internet users by copying a third-party website is also indicative of Respondent’s bad faith registration and use of the disputed domain name.
Complainant’s fame in the EXXON mark supports a finding of bad faith, as Respondent had actual and constructive knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its EXXON mark, as well as related trademarks.
Complainant’s EXXON trademark is well-known throughout the world.
Respondent registered the <exonoilandgas.org> domain name subsequent to Complainant acquiring rights in its relevant trademark.
Respondent is not authorized to use Complainant’s trademark(s).
Respondent copied certain content from third-party Suncor’s website, <suncor.com>, and presented it as it were its own on a website that is referenced by the at-issue <exonoilandgas.org> domain name. Suncor did not authorize such copying.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the EXXON mark under Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. Respondent’s location outside of the United States is irrelevant to this determination. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); 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).
Respondent’s <exonoilandgas.org> domain name is confusingly similar to Complainant’s EXXON mark. The at-issue domain name removes the letter “x” from the Complainant’s mark, adds the descriptive terms “oil,” and “gas” as well as the connector “and,” and appends the top level domain, “.org” thereto. Such changes to the EXXON mark are not sufficient to render the domain name distinct from Complainant’s trademark, and therefore the Panel finds the domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also 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.”).
Respondent lacks both rights and legitimate interests in respect of Respondent’s domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies the registrant of the disputed domain name as “amadi chibuike / exponentgroup” and therefore does not support a finding that Respondent is known by the disputed domain name. Additionally, there is no evidence in the record which tends to prove that Respondent is otherwise known by the <exonoilandgas.org> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent has merely copied the information of a third-party’s website, <suncor.com>, and used it on its own <exonoilandgas.org> website. Thereby, Respondent shows that it is attempting to deceive Internet users as to the sponsorship of the website presumably for some sort of commercial gain. Use of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Respondent has created consumer confusion through its registration and use of the <exonoilandgas.org> domain name. By attracting Internet users to its website by registering and using a domain name similar, in sight, sound and meaning to Complainant’s mark, Respondent demonstrates the particular bad faith circumstances codified under Policy ¶ 4(b)(iv). Although it is not certain that Respondent benefits financially from its <exonoilandgas.com> website, it is reasonable to presume, where, as here there is no other readily apparent reason for registering the domain name, and where, as here, there is an absence of any evidence to the contrary, that it does. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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).
Furthermore, Respondent’s general intent to deceive Internet users by copying third-party Suncor’s website is also indicative of Respondent’s bad faith registration and use of the disputed domain name. See DocuSign, Inc. v. Traffic CPMiPV, Maria Carter, D2010-0344 (WIPO April 26, 2010) (finding that “Respondent’s copying of Complainant’s webpage indicates an intent to deceive or, at a minimum, act in bad faith with the intent for commercial gain.”); see also Nicole Haliday v. Stevans v. Allan & Co., D2008-1577 (WIPO Dec. 19, 2008) (finding that Respondent’s verbatim copying of text from website demonstrates violation of Policy ¶ 4(b)(iv)).
Finally, Respondent was well-aware of Complainant’s EXXON mark when it registered the at-issue domain name. Complainant’s EXXON mark is well known throughout the world; Respondent’s use of the confusingly similar at-issue domain name to front a website which deceptively appears to be related to Complainant could only have been designed with Complainant’s mark in mind. That Respondent had actual knowledge of Complainant’s rights in the EXXON mark prior to the time when it registered the at-issue domain name urges that Respondent registered the <exonoilandgas.org> domain name in bad faith under Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <exonoilandgas.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 17, 2012
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