Chevron Intellectual Property LLC v. Above.com Domain Privacy
Claim Number: FA1211001471824
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 <chevrontexacococards.com>, registered with Above.com Pty Ltd.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2012; the National Arbitration Forum received payment on November 16, 2012.
On November 18, 2012, Above.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <chevrontexacococards.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 November 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@chevrontexacococards.com. Also on November 19, 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 December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
i. Respondent is neither commonly known by the disputed domain name nor has it acquired trademark or service mark rights in the disputed domain name.
ii. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. Respondent’s disputed domain name contains a series of pay-per-click advertising links which, when accessed, generate financial revenue for Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CHEVRON and TEXACO marks.
2. Respondent’s <chevrontexacococards.com> domain name is confusingly similar to Complainant’s marks.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the 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 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.”).
Complainant, Chevron Intellectual Property LLC, contends that it is a business selling a wide range of products and services, including gasoline, lubricants, and operating service stations, lubrication services, and credit card services. Complainant asserts that it owns the famous CHEVRON and TEXACO marks. Complainant contends that it owns and operates a public Internet website at <www.chevrontexacocards.com>, where it promotes its credit card services and allows its credit card owners to access their accounts. Complainant asserts that it owns and shows evidence of trademark registrations with the USPTO for the CHEVRON mark (e.g., Reg. No. 364,683, registered August 23, 1937) and for the TEXACO mark (e.g., Reg. No. 57,902, registered December 4, 1906). See Complainant’s Exhibits 1 and 6. The Panel finds that although Respondent appears to reside in Australia, Policy ¶ 4(a)(i) only requires that Complainant register its trademark in some jurisdiction to establish its rights in the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the CHEVRON and TEXACO marks with the USPTO are sufficient to establish rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <chevrontexacococards.com> is nearly identical to Complainant’s CHEVRON and TEXACO marks. Complainant asserts that Respondent merely misspelled the term “TEXACO” as “TEXACOCO,” in the hopes of attracting consumers who misspell Complainant’s TEXACO mark. The Panel finds that the misspelling of Complainant’s mark does not adequately distinguish Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). Complainant further contends that Respondent has added the generic term “cards” to Complainant’s CHEVRON and TEXACO marks. The Panel finds that the addition of the term “cards” does not negate confusing similarity between Respondent’s disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Finally, Complainant asserts that Respondent’s use of the gTLD “.com” is irrelevant under Policy ¶ 4(a)(i). The Panel finds that the addition of a gTLD is insufficient to differentiate Respondent’s disputed domain name from Complainant’s marks. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Therefore, the Panel concludes that Respondent’s <chevrontexacococards.com> domain name is confusingly similar to Complainant’s CHEVRON and TEXACO marks under 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 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.”).
Complainant argues that Respondent is neither commonly known by the disputed domain name nor has it acquired trademark or service mark rights in the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name identifies “Above.com Domain Privacy” as the registrant of the <chevrontexacococards.com> domain name. The Panel also notes that Respondent has not provided any additional information evidencing that Respondent is commonly known by the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent’s website located at <chevrontexacococards.com> displays a series of pay-per-click advertising links for websites pertaining to credit card services. Complainant argues that the majority of the links on Respondent’s website direct consumers to websites pertaining to credit card services which directly compete with Complainant’s website and offerings. The Panel notes that Respondent’s website at <chevrontexacococards.com> features links such as “Apply for Gas Credit Card,” “Visa Credit Card Offers,” and “Cash Back Visa Card.” See Complainant’s Exhibit 11. The Panel finds that Respondent’s use of the disputed domain name to feature links that compete with Complainant’s credit card services, by which Respondent is financially gaining, is not 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent’s disputed domain name contains a series of pay-per-click advertising links which, when accessed, generate financial revenue for Respondent. Complainant contends that Internet users searching for Complainant’s credit card services at <chevrontexacocards.com> may mistakenly type the letters “co” twice and instead land at Respondent’s website, which contains links to various other companies offering credit card services. The Panel notes that Respondent’s website at <chevrontexacococards.com> features links such as “Apply for Gas Credit Card,” “Visa Credit Card Offers,” and “Cash Back Visa Card.” See Complainant’s Exhibit 11. Complainant contends that Respondent’s use of the disputed domain name is intentionally diverting users seeking Complainant’s website. The Panel finds that Respondent’s use of the <chevrontexacococards.com> domain name constitutes attraction for commercial gain under Policy ¶ 4(b)(iv), which demonstrates bad faith use and registration under Policy ¶ 4(a)(iii). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevrontexacococards.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 3, 2013
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