Chevron Intellectual Property LLC v. Krishna Pandey / BABA
Claim Number: FA1302001486872
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Krishna Pandey / BABA (“Respondent”), Nepal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-weagree.com>, registered with SPOT DOMAIN LLC DBA DOMAINSITE.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2013; the National Arbitration Forum received payment on February 26, 2013.
On February 26, 2013, SPOT DOMAIN LLC DBA DOMAINSITE.COM confirmed by e-mail to the National Arbitration Forum that the <chevron-weagree.com> domain name is registered with SPOT DOMAIN LLC DBA DOMAINSITE.COM and that Respondent is the current registrant of the name. SPOT DOMAIN LLC DBA DOMAINSITE.COM has verified that Respondent is bound by the SPOT DOMAIN LLC DBA DOMAINSITE.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 March 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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@chevron-weagree.com. Also on March 1, 2013, 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 March 29, 2013, 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’s trademark registrations includes CHEVRON for petroleum products issued in 1939 (U.S. Reg. 364683) and 1945 (U.S. Reg. 416133). Today, the name CHEVRON - often with Complainant’s corporate logo- is registered for many goods and services spanning more than a dozen international classes.
In addition to trademark registrations, Complainant owns many domain names incorporating the Chevron name which it uses in all aspects of its business, including public outreach. Currently Complainant is conducting a public awareness campaign under the slogan “We Agree.”
The disputed domain name currently resolves to a website bearing a superficial appearance to a non-commercial use, the home page of which is designed to imitate Complainant’s public relations campaign at www.chevron.com/weagree:
The content at Respondent’s website is a façade. Respondent’s website is a device in furtherance of Respondent’s Internet marketing business.
Text on Respondent’s website implicitly asserts that the website is owned by Complainant and contains a handful of links, one of which, entitled “Market Samurai Discount by Baba,” re-directs Internet users to Respondent’s Internet marketing business at www.babapandey.com/market-samurai-review-huge-discoun
The disputed domain name is identical to Complainant’s mark but for addition of the slogan “We Agree.” A domain name that wholly incorporates a registered mark may be sufficient without more to establish confusing similarity for the purposes of the UDRP.
The name is not merely confusingly similar to Complainant’s mark but is a copy of Complainant’s advertising undertaken by Respondent designed to cause confusion about the origin, source and sponsorship of the content at the site.
Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not known by the disputed domain name nor has it been authorized by Complainant to use its name and registered marks; (2) Respondent does not have any trademark registration or other rights in the disputed domain name; (3) there is no evidence that Respondent has used the disputed domain name in connection with a bona fide offer of goods or services, or for any genuine noncommercial purpose; and (4) Respondent is using the disputed domain name to host a website with links to other commercial sites in a manner that is misleadingly diverting consumers for Respondent’s commercial gain.
The disputed domain name was registered and used in bad faith. “[R]egistration of a well-known trademark as a domain name is a clear indication of bad faith in itself.”
Respondent is using the disputed domain name to profit by attracting Internet users to Respondent's website and using the site for the advertising and sale of goods and services by Respondent and other persons without Complainant’s consent. This use of the disputed domain names demonstrates that Respondent is attempting to profit from Complainant's goodwill associated with the CHEVRON mark and clearly related WE AGREE slogan, and therefore is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).
Respondent, by its use of the phrase “oil companies like ours” in the content of its website, is deceptively attributing the origin, source and sponsorship of the domain name to Complainant. That alone would compel a finding of bad faith under Policy 4(a)(iii), and the evidence here in its entirety is more than sufficient for that purpose.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has numerous trademark registrations for its CHEVRON mark.
Respondent is not authorized to use Complainant trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in its CHEVRON mark.
Respondent’s website that is addressed by the at-issue domain name is used display pay per click links to third parties.
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 rights in the CHEVRON mark by way of its multiple USPTO trademark registrations. Any one of Complainant’s USPTO registration is sufficient evidence of rights in a mark under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”). It is insignificant that Respondent may reside outside the jurisdiction of trademark registrar. See 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).
In forming the domain name Respondent takes the CHEVRON mark and adds a hyphen along with the generic term “WE AGREE,” and appends the top level domain name “.com” thereto. Generally, the addition of a hyphen and/or a top level domain name never differentiates a trademark from a domain name under the Policy. 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). Importantly, the term “WE AGREE” directly identifies one of Complainant’s current public awareness slogans. Therefore instead of distinguishing the two, the inclusion of “WE AGREE” further any false associate between the <chevron-weagree.com> domain name and Complainant. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel concludes that Respondent’s <chevron-weagree> domain name is confusingly similar to Complainant’s CHEVRON mark under Policy ¶4(a)(i).
Respondent lacks both rights and legitimate interests in respect of the at-issue 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 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 an 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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Krishna Pandey” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Moreover, Respondent’s at-issue domain name addresses a webpage containing pay-per-click links. Visitors who click on one of the links are directed to a variety of third parties as well as to Respondent’s own Internet business. Using the at-issue domain name in this manner is neither a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii), nor a bona fide use under Policy ¶ 4(c)(i). 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).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present as well as other circumstance which show that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s registration of Complainant’s well known CHEVRON trademark as part of the at-issue domain name suggests bad faith under the Policy. See The Gap, Inc. v. Deng Youqian, D2009-0113 (WIPO March 23, 2009) (“[T]he Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.”)
Second, Respondent is attempting to generate revenue by confusing Internet users into believing the <chevron-weagree.com > website is sponsored or otherwise affiliated with Complainant. Respondent intends that those Internet users looking for Complainant, via a search engine or otherwise, will be mistakenly motivated to navigate to the at-issue website. Once there the accidental visitor is then in a position to click on any one of the confounded website’s several pay-per-click links or on a link to Complainant’s online business. Respondent’s registration and use of the confusingly similar at-issue domain name in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). 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); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Furthermore, this use of the domain name also demonstrates bad faith pursuant to Policy ¶4(a)(iii) in that it is likely to be disruptive to Complainant’s business. 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)).
Finally and although not expressly suggested in the Complaint, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the CHEVRON mark at the time it registered the at-issue domain name. Respondent’s prior knowledge is clear from the fact that the <chevron-weagree.com> domain name combines the renowned CHEVRON mark with one of Complainant’s currently active slogans. Indeed, it would be daft to believe that Respondent could have conceived of such a Complainant centric domain name without having the Complainant and its CHEVRON trademark prominently in mind. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevron-weagree.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 1, 2013
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