national arbitration forum

 

DECISION

 

Exxon Mobil Corporation v. Aquiline International Corp. L

Claim Number: FA1212001474961

PARTIES

Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA.  Respondent is Aquiline International Corp. L (“Respondent”), United Arab Emirates.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <mobiljet2.com> and <mobiljet-254.com>, registered with Tucows, Inc.

 

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received payment on December 10, 2012.

 

On December 10, 2012 Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <mobiljet2.com> domain name is registered with Tucows, Inc. On December 14, 2012, Tucows, Inc., confirmed by e-mail to the National Arbitration Forum that the <mobiljet-254.com> domain name is registered with Tucows, Inc., and that Respondent is the current registrant of the names.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc., 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 December 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2013 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@mobiljet2.com, and postmaster@mobiljet-254.com.  Also on December 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 January 15, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.

 

On January 15, 2013, Respondent sent a letter to the FORUM.  The letter was not timely, nor compliant with the requirements for a Response, and consented to the transfer of the domain name.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

Preliminary Issue:  Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends the following:

 

·        The nominal registrants are identical.  See Exhibit A.

·        The nominal registrants share the same city, country and zip code, as well as similar street addresses.  Id.

·        The admins have the same name, phone number, city, country and zip code, as well as similar street addresses.  Id.

·        The domains share the same registrar, registration service provider and DNS servers.  Id.

·        “Trast-Aero” appears in the e-mail address for the admin on <mobiljet-254.com>, while the landing page for <mobiljet2.com> promotes “TRAST Aerosupermarket.”  See Exhibits A and F.

 

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 Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.

 

PARTIES' CONTENTIONS

A. Complainant

 

B. Respondent

Respondent failed to submit a Response in this proceeding; but its late letter indicated that it has stopped using the domain name and consented to the transfer.

 

FINDINGS

Complainant is Exxon Mobil Corp., who list its address as Irving, TX, USA. Complainant states that it is the world’s largest publicly traded international oil and gas company. Exxon Corporation and its subsidiaries joined with Mobil Corporation in 1999 to create Complainant, Exxon Mobil Corp. The Complainant operates official websites at <exxonmobil.com> and <mobil.com>. Complainant began using the EXXON mark in 1967 and the MOBIL mark in the 1930’s. Various forms of public media and other UDRP cases have recognized one or both of the marks as famous. MOBIL and its family of marks are registered domestically and internationally including in the United Arab Emirates.

 

Respondent is Aquiline International Corp. L who list its address as Sharjah, NA 8187 AE.  The disputed domain names were registered with a registrar who list its address as Toronto, ON, Canada.  The Panel finds the letter sent by Respondent would not change the outcome of the decision and has disregarded it.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant alleges that it has rights in the MOBIL mark by way of trademark registrations with the USPTO.  See, e.g., Reg. No. 337,002 registered on July 28, 1936; Reg. No. 1,046,513 registered on August 17, 1976.  Complainant also has rights in the MOBIL mark in the United Arab Emirates.  See Ministry of Economy & Commerce Reg. No. 8,848 registered on Feb. 25, 1997.  The Panel finds that evidence of registration of the MOBIL mark in Respondent’s country satisfies Complainant’s burden under Policy ¶ 4(a)(i).  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).

 

Complainant next contends that Respondent’s <mobiljet2.com> and <mobiljet-254.com> domain names are confusingly similar to the MOBIL mark.  Complainant notes that both domain names add the term “jet” as well as the numerals “2” and “254.”  Complainant contends that all off these additions are descriptive of Complainant’s business in selling jet engine lubricants (“Mobil Jet Oil II” and “Mobil Jet Oil 254”).  Complainant states that the addition of the generic top-level domain (“gTLD”) “.com” and a hyphen should also be noted.  The Panel notes the gTLD and finds that neither of these additions make the disputed domain names any less confusingly similar to Complainant’s mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). 

 

The Panel also finds that the addition of descriptive terms such as “jet” enhance confusing similarity when there is a connection between the term and the products or services provided by Complainant.  See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business).  The Panel concludes that the addition of numerals to the disputed domain names does nothing to differentiate the disputed domain names from the MOBIL mark.  See Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar). The Panel finds that both the <mobiljet2.com> and <mobiljet-254.com> domain names are confusingly similar to Complainant’s MOBIL mark under Policy ¶ 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel recognizes that 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). The Complainant has met this burden.

 

Complainant contends that Respondent is not commonly known by the Complainant’s mark.  Complainant asserts that Respondent is not licensed by Complainant to use any of Complainant’s marks. Complainant also indicates that the WHOIS information identifies Respondent as “Aquiline International Corp. L.”  The Panel notes that Policy ¶ 4(c)(ii) requires that Respondent be “commonly known by the domain name”  but agrees that Complainant’s assertions and conclusions are equally relevant in regards to both the <mobiljet2.com> and <mobiljet-254.com> domain names.  Previous panels have found that a respondent is not commonly known by a disputed domain name when there is no evidence anywhere in the record to link the respondent, by name or otherwise, to the disputed domain names.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).  The Panel finds that Respondent is not commonly known by the <mobiljet2.com> and <mobiljet-254.com> domain names under Policy ¶ 4(c)(ii).

 

Complainant contends that both the <mobiljet2.com> and <mobiljet-254.com> domain names resolve to websites featuring mock-ups or imitations of Complainant’s logos along with advertisements for Complainant’s competitors. Complainant then contends that these uses are not bona fide offering of goods or services, nor a legitimate noncommercial or fair use.  The Panel notes that the <mobiljet2.com> domain name resolves to a website that purports to sell jet oil under Complainant’s mark, provides “other products” which appear to be produced by Complainant’s competitors, and actively advertises links to the <trast-aero.com> domain name.  See Complainant’s Exhibit F.  The Panel also noted that the <mobiljet-254.com> domain name resolves to a website under the “aerosupermarket TRAST” masthead, which solicits Complainant’s jet oil products as well as competing oil products.  See Complainant’s Exhibit G. 

 

The Panel finds that Respondent’s use of the disputed domain names in the solicitation of the Complainant’s products of services, or the offering of products made by a Complainant’s competitors in the marketplace, cannot be viewed as a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor can  Respondent’s commercial offerings logically be interpreted as a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant contends that Respondent is disrupting Complainant’s business by using confusingly similar domain names that feature imitations of Complainant’s marks in an attempt to redirect Internet users to the websites of Complainant’s competitors.  The Panel notes that both of the disputed domain names resolve to websites prominently featuring Complainant’s mark while also featuring competing jet oil products.  The Panel finds Respondent’s use of the disputed domain names to constitute an attempt to disrupt Respondent’s business and that Respondent registered and is using the <mobiljet2.com> and <mobiljet-254.com> domain names in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).

 

Complainant further contends that Respondent is taking advantage of the confusing similarity of its <mobiljet2.com> and <mobiljet-254.com> domain names in diverting Internet users to Respondent’s websites.  Complainant contends that Respondent’s use of an imitation of Respondent’s marks on the disputed domain name’s resolving websites illustrates the false impression that Respondent intends to create.  The Panel again notes that the domain names resolve to websites featuring imitations of the MOBIL mark and hyperlinks to competing products.  See Complainant’s Exhibits F–G.  ).  The Panel finds that Respondent is employing a similar technique in its use of the <mobiljet2.com> and <mobiljet-254.com> domain names, and that Respondent is extracting a commercial gain in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods.).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mobiljet2.com> and <mobiljet-254.com>  domain names be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                    Dated: January 28, 2013

 

 

 

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