ChevronTexaco Corporation v. Bill Lagna
Claim Number: FA0303000147389
PARTIES
Complainant
is ChevronTexaco Corporation, San
Ramon, CA (“Complainant”) represented by Mary
A. Francis, of ChevronTexaco Corporation. Respondent is Bill Lagna, Baltimore, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <chevron.biz>,
registered with Dotster.
PANEL
The
undersigned certify that they have acted independently and impartially and, to
the best of their knowledge, have no known conflict in serving as Panelists in
this proceeding.
Mr. David Sorkin, the Honorable Robert T. Pfeuffer
(Ret.), and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 5, 2003; the Forum received a hard copy of the
Complaint on March 6, 2003.
On
March 6, 2003, Dotster confirmed by e-mail to the Forum that the domain name <chevron.biz> is registered with Dotster
and that Respondent is the current registrant of the name. Dotster has verified that Respondent is
bound by the Dotster 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
March 12, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 1,
2003 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@chevron.biz by e-mail.
A
timely Response was received on April 1, 2003.
Complainant submitted an untimely Additional Response. Complainant contends that it did not receive
Respondent’s Response until after the deadline for filing an additional statement
elapsed. Respondent timely submitted an
Additional Statement. The Panel has
considered the Additional Submissions, including Complainant’s untimely
Additional Response.
On April 10, 2003, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Mr. David
Sorkin, the Honorable Robert T. Pfeuffer (Ret.), and the Honorable James A.
Carmody as Panelists. Judge Carmody recused himself and on April
16, 2003, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) to
the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
Respondent requests that the Panel deny Complainant’s requested relief
and find that Complainant has engaged in reverse domain name hijacking.
A.
Complainant
Respondent
has not made demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services. Despite the fact that Respondent registered the domain name in
dispute on March 27, 2002 – eleven months prior to the filing of this Complaint
– the domain name in dispute does not link to an active site. Respondent has never been commonly known by
the domain name. Respondent is not
making a legitimate noncommercial or fair use of the domain name. Moreover, the domain name in dispute – which
is in the <.biz> top level domain – would not be appropriate for such a
purpose. The <.biz> domain has
been specifically marketed by Neulevel, the exclusive operator of the .BIZ
registry, as being for business purposes.
B.
Respondent
Respondent,
Bill Lagna, concedes that his domain name is identical to Complainant’s
trademark. However, Respondent contends
that confusion will be limited only to first-time visitors.
Respondent
argues under Policy ¶ 4(a)(ii) that Complainant’s CHEVRON trademark
registrations do not protect Complainant’s mark when it is used for its common
or generic purpose. Respondent states,
“The definition of ‘chevron’ is a v-shaped bar on the sleeve of a uniform
showing rank.”
Respondent
alleges that he has been employed by the U.S. Army since 1985. Respondent asserts that he registered the <chevron.biz>
domain name to establish an Internet presence for the chevron, the official
insignia of rank in the United States military. Respondent argues that the “.mil” top-level domain is not
available for public registration, but that there is a significant and
increasing public interest in the general topic of the military and the
chevron. Respondent asserts that he
intends to use the subject domain name in connection with an
information-related website that focuses on the chevron.
C.
Additional Submissions
Complainant
contends that initial interest confusion is sufficient to show that the domain
name is confusingly similar. Complainant
does not dispute the sincerity of Respondent’s interest in the general topic of
the chevron, the official insigna of rank in the United States military. However, Respondent does not have a
legitimate interest in the domain name <chevron.biz>. A registrant is not entitled to use the
well-known trademark of another in a way that is likely to cause
confusion. The “Biz Registration
Restrictions”of <.biz> require that registrations in the .BIZ TLD must be
used or intended to be used primarily for bona fide business or commercial
purposes. Complainant contends that
Respondent is holding the domain name primarily for non-business and
non-commercial purposes. Complainant also
contends that Respondent is holding the domain name for resale.
Respondent contends
that confusion will not result from his use of the domain name as the products
are different. Respondent contends that
“chevron” is a generic word. Respondent
claims to have a known and established business and has plans to develop
streaming digital video for the website.
Respondent contends that he registered the domain name in good faith.
FINDINGS
Complainant
is the owner of the trademark CHEVRON known throughout the world for
energy-related goods and services, including vehicle fuels and 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 web site at
<chevron.com>. Complainant owns hundreds
of registrations for the trademark CHEVRON throughout the world. In the United States, 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 mark CHEVRON is prominently
displayed on the approximately 8,000 CHEVRON-branded service stations across
the United States.
Respondent
registered the domain name <chevron.biz> to establish a web
presence for the chevron, the official insignia of rank in the United States
military. Respondent has been employed
by the U.S. Army since 1985 and, as such, has a real and professional interest
in the topic. Respondent registered the
domain name on March 27, 2002 with the intent of making useful information
about the chevron, its history and significance available to interested
parties.
Respondent
was aware that the term “chevron” was a trademark of a number of unrelated
companies, among them ChevronTexaco.
Respondent claims that his intended use was fair use of the common and
generic word, both in commerce and on the Internet.
Other
trademarks incorporate the common word “chevron” and are not affiliated with
ChevronTexaco. Respondent claims that a
Google search, revealed over 495,000 references to “chevron.” Many U.S. companies operate under the mark
CHEVRON either alone, or combined with other terms.
Respondent claims that his privately owned company, Lagna
Medallion Industries, has been in business for 29 years and is a leading supplier
of digital remote video equipment and night vision cameras in the United
States. Respondent also claims to sell
various unique and high technology items related to video surveillance. Respondent says that video streaming chat
rooms on <chevron.biz> is a logical extension of those interests,
as are his other domain name registrations.
Respondent is employed by the U.S. Army and has an interest in <chevron.biz>
as a military history, military interest, video chat and collectible site.
Respondent
claims that a significant portion of the site has been developed and includes
original and collected articles on the history of the chevron, the significance
of the chevron in the military, a complete pictorial listing of all active
chevrons presently used in the U.S. military, a pictorial listing of most of
the chevrons previously in use but now retired, a history of the various
chevrons by service, a listing of related books and other sources on the topic,
a daily events page, and a post board.
Not yet developed but under development at the current time is a chat
room and email server which permits real-time streaming of voice and video,
allowing direct interactive communication of users. The site is still under construction, primarily due to outside
time constraints.
Respondent
says that the site is not yet active because aspects are still under
development. The unique, functional
engine for live video streaming is still in development. When it is ready, <chevron.biz>
along with several other sites will be brought on-line. Despite different themes, they will share
the same common elements of: general info pages, a white board (for posting for
sales and trading of collectibles), a mail server, a search engine, relevant
news, and still under development, the streaming video chat server.
While
Respondent has presented evidence of collected articles on the history of the
chevron, he has not documented preparations to use or develop the website.
Respondent has registered 32 domain names
that are currently sitting idle.
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 numerous trademark registrations worldwide for the CHEVRON mark, which it
uses to identify its energy-related goods and services. More specifically, Complainant holds at
least 33 U.S. trademark registrations listed on the Principal Register. Complainant has used the CHEVRON mark
without interruption since at least 1935. The CHEVRON mark is prominently
displayed on approximately 8,000 CHEVRON-branded service stations across the
United States. Complainant operates
from a website located at <chevron.com>. See The Men’s Wearhouse, Inc.
v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Respondent’s
<chevron.biz> domain name is “virtually identical” to its CHEVRON
mark. The addition of a top-level
domain, such as “.biz,” is inconsequential in determining whether a domain name
is identical to a mark under Policy ¶ 4(a)(i). See 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); see also ViewSonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6,
2000) (finding that the domain names <viewsonic.net> and
<viewsonic.org> are identical to Complainant’s VIEWSONIC mark); see
also U.S. Patent and Trademark Office Examination
Guide No. 2-99, "Marks Composed, in
Whole or in Part, of Domain Names," Section I (Sept. 29, 1999)
(When a trademark, service mark, collective mark or certification mark is
composed, in whole or in part, of a domain name, neither the beginning of the
URL (http://www.) nor the top-level domain have any source indicating
significance. Instead, those designations are merely devices that every
Internet site provider must use as part of its address).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
“Respondent
may fairly use descriptive or generic terms as a commercial domain name.” Eastbay Corporation v. VerandaGlobal.com, Inc.,
FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v.
Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has
rights and legitimate interests in the domain name where “Respondent has
persuasively shown that the domain name is comprised of generic and/or descriptive
terms, and, in any event, is not exclusively associated with Complainant’s
business”). The mark “CHEVRON” is a
descriptive name in which Complainant cannot have exclusive rights. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,2000). However, Respondent is not using the domain
name <chevron.biz> but has been passively holding the domain for
over 11 months. See HomeFinishers,
Inc. v. Tom Schutz, FA 123928 (Nat. Arb. Forum Oct. 10, 2002) (The passive
holding of the domain name <homefinishers.com> for over two years without
providing any demonstrable plans or preparations to use the domain name fails
to show rights or legitimate interests); see also Flor-Jon Films v. Larson,
FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to
develop the site demonstrates a lack of legitimate interest in the domain
name).
Respondent asserts the intent to use the
domain name at some unspecified time in the future. Respondent has not shown any concrete evidence in support of such
plans. See Do The Hustle, LLC v. Tropic Web, supra. (“once the
complainant has made a prima facie showing, the burden of production shifts to
the respondent to show by concrete evidence that it has rights to or legitimate
interests in the domain name at issue. . . . ‘Concrete evidence’ constitutes
more than personal assertions.”). A
Respondent’s “unsupported, self-serving allegations alone are insufficient to
establish that [the] Respondent has rights or legitimate interests in respect
to the domain name at issue.” Twentieth
Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27,
2002) (finding the Respondent’s assertion that she registered the domain name
<foxstudios.biz> in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that she
had rights or interests in respect to the domain name at issue); see also
Travel in A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9,
2000) (Respondent failed to show rights or legitimate interests in
<momentsnoticetravel.com> where Respondent contended that domain name was
registered for future use in connection with an “undisclosed business
venture”); see also Camper, S.L. v. DPR USA a/k/a Global DNS Services,
FA 118188 (Nat. Arb. Forum Oct. 22, 2002) (Respondent failed to establish
legitimate interests in the domain name <camper.us> through mere
statement of intent to market campers).
Respondent has only submitted vague and conclusory personal assertions
in support of an intent to use the domain name for a business or commercial
purpose at some specified time in the future.
Respondent has not submitted any concrete
evidence of development of the website for business or commercial
purposes. Furthermore, Respondent’s
evidence tends to show an intent to develop a website for non-business and
non-commercial purposes.
Respondent’s lack of use or evidence of
demonstrable preparations to use the domain name for a legitimate purpose shows
a lack of rights in the domain name under Policy ¶¶ 4(c)(i) and (iii). See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that when Respondent declares its intent to develop a website, “[Policy ¶]
4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such
preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”); see also Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services).
Registrations
in the .BIZ TLD must be used or intended to be used primarily for bona fide
business or commercial purposes.
Restrictions Dispute Resolution Policy (RDRP), Paragraph 4(a). Respondent states that he registered the
domain name <chevron.biz>
to provide a website with information about the chevron, its history and
significance. Such intended use is
noncommercial. Respondent’s intended
use of the domain name specifically violates the .BIZ Registration Restrictions
and the RDRP.
Since Respondent's intended use of the
domain name is noncommercial, Policy ¶ 4(c) (iii) (“ making a legitimate
noncommercial or fair use of the domain name”) requires that he actually engage
in that use, not merely show demonstrable preparations to do so. See BMW AG v. Loophole, D2000-1156 (WIPO
Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed
to be using the domain name for a noncommercial purpose but had made no actual
use of the domain name).
Respondent has never been commonly known
by the domain name under Policy ¶ 4(c)(ii), as Respondent appears to be an
individual, Bill Lagna. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28,
2001) (finding sufficient proof that Respondent was not commonly known by a
domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because
of Complainant’s well-established use of the mark).
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.
Respondent has
passively held the domain name for 11 months since registration. Respondent’s
passive holding constitutes bad faith under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent
made no use of the domain name or website that connects with the domain name, and
that passive holding of a domain name permits an inference of registration and
use in bad faith); see also E.
& J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000)
(finding bad faith where (1) Respondent knew or should have known of Complainant’s
famous GALLO marks and (2) Respondent made no use of the domain name
<winegallo.com>).
Respondent acquired 32 domain name
registrations in the “.us” domain, none of which resolve to an active
website. Respondent’s pattern of
warehousing domain names and the fact that the disputed domain name has not
been used in the 11 months since registration, is evidence of bad faith.
Respondent’s violation of the .BIZ
Registration Restrictions, by registering the domain name <chevron.biz>
for noncommercial purposes, is evidence of bad faith. See FDNY Fire Safety
Education Fund, Inc. v. Roger Miller, FA145235 (Nat. Arb. Forum March 26,
2003); see also Bayer Aktiengesellschaft v. Dangoz & Partners, D2002-1115
(WIPO February 3, 2003). (“[T]he
voluntary breach of the registrar’s Domain Name Services Agreement is evidence
of bad faith”).
Respondent
argues that its actions satisfy the requirements of good faith registration; see
also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125,
"[b]ad faith intent … shall not be found in any case in which the court
determines that the person believed and had reasonable grounds to believe that
the use of the domain name was a fair use or otherwise lawful." 15 U.S.C. §1125(d)(1)(B)(ii). However, Respondent has not actually made
any use of the domain name.
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Respondent
asserts that he provided Complainant with an abbreviated history of the
“chevron” and its use in the military via e-mail, but that Complainant
intentionally failed to include this communication file as part of the
Complaint. Therefore, Respondent
charges that Complainant is misrepresenting the communications between the parties
involved in this dispute. Respondent
submits that Complainant’s misrepresentation of information constitutes a
willful abuse of the UDRP procedure, and “is indicative of an attempt at
reverse domain name hijacking.” See UDRP Rule 1. “Reverse Domain
Name Hijacking means using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.” See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on
a claim of reverse domain name hijacking, Respondent must show that Complainant
brought the claim in bad faith despite the knowledge that Respondent has an
unassailable right or legitimate interest in the disputed domain name, or that
Respondent lacks the requisite bad faith registration and use of the disputed
domain name). The Panel concludes that
Complainant has not engaged in reverse domain name hijacking.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevron.biz>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable
Robert T. Pfeuffer (Ret.), Panelist
The Honorable
Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 24, 2003
I Dissent. I would find for Respondent on the third element, bad faith. Respondent registered (and used) the domain
name for reasons entirely unrelated to Complainant or its mark, precluding a
finding of bad faith. And even if his
intended noncommercial use constitutes a breach of the registration agreement,
the only remedy for that breach lies under the RDRP, not the UDRP. See
Council of Better Business Bureaus, Inc. v. Haynes, DBIZ2002-00079 (WIPO
July 24, 2002).
David Sorkin,
Panelist
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