Chevron Intellectual Property LLC v. andrew toro
Claim Number: FA1302001487014
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is andrew toro (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevronthinkswerestupid.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 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 <chevronthinkswerestupid.com> domain name is registered with Spot Domain LLC dba Domainsite.com and that Respondent is the current registrant of the names. 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 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@chevronthinkswerestupid.com. Also on March 4, 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 April 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 holds multiple registrations of the CHEVRON mark with the United States Patent & Trademark Office (“USPTO”) (e.g. Reg. No. 364,683 registered Feb. 14, 1939).
§ Respondent registered the <chevronthinkswerestupid.com> domain name on October 17, 2010.
§ The disputed domain name wholly incorporates Complainant’s CHEVRON mark.
§ While the phrase “think were stupid” would imply that the corresponding website would be associated with criticism of Complainant, the resolving website is not used for this purpose.
§ Even if the site was used for criticism, this does not defeat a finding of confusing similarity.
§ Respondent is not commonly known by the disputed domain name nor has it been authorized by Complainant to use its mark.
§ By using the disputed domain name to host a website with links to unrelated commercial sites, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
§ By attracting Internet users to Respondent’s website and using the site for the advertising and sale of unrelated goods and services, Respondent is attempting to profit from Complainant’s goodwill associated with the CHEVRON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CHEVRON mark. Respondent’s domain name is confusingly similar to Complainant’s CHEVRON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <chevronthinkswerestupid.com> domain name, and that Respondent registered and uses 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 claims rights in the CHEVRON trademark pursuant to its registrations with the USPTO (e.g. Reg. No. 364,683 registered Feb. 14, 1939) in relation to its work in the oil and energy industry. A complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the CHEVRON mark.
Complainant claims that the <chevronthinkswerestupid.com> domain name is confusingly similar to its CHEVRON mark. Complainant notes that the disputed domain name contains Complainant’s mark in its entirety. The addition of a generic top-level domain (“gTLD”) such as “.com” has been found to be irrelevant to a confusing similarity analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues that the addition of the phrase “thinks were stupid” does not defeat a finding of confusing similarity. Complainant notes that although the disputed domain name implies that the resolving website will include criticism of Complainant’s business, the resolving website is in fact completely unrelated to Complainant’s business. Complainant further argues that even if Respondent were using the disputed domain name for criticism, the domain name itself would still be confusingly similar. The affixation of negative terms does not defeat a finding of confusing similarity. See ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument). The Panel therefore finds that the <chevronthinkswerestupid.com> domain name is confusingly similar to Complainant’s CHEVRON mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent is not commonly known by the disputed domain name and has therefore not established rights under Policy ¶ 4(c)(ii). Complainant notes that it has not authorized Respondent to make use of the CHEVRON mark. The Panel notes that the WHOIS information lists “andrew toro” as the registrant, and Complainant contends that this name has changed multiple times. The WHOIS information and a lack of authorization are strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant additionally argues that Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant claims that respondent is using the disputed domain name to host a web page featuring a variety of information and links to products and services completely unrelated to Complainant’s business (including automobile insurance and mental health services). Based on UDRP precedent finding that a respondent’s use of a disputed domain name to link to websites unrelated to Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is attempting to commercially profit by diverting Internet users to its website through a domain name that is confusingly similar to Complainant’s mark, and that this demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). The use of pay-per-click advertising unrelated to a complainant’s business is evidence of bad faith diversion under Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Therefore the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <chevronthinkswerestupid.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 11, 2013
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