Chevron Intellectual Property LLC v. None, None
Claim Number: FA1306001504045
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is None, None (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevroniraq.com>, registered with GODADDY.COM, LLC.
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.
Robert T. Pfeuffer, Senior District Judge (Texas), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.
On June 10, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chevroniraq.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 June 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@chevroniraq.com. Also on June 11, 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.
A timely Response was received and determined to be complete on June 21, 2013.
Complainant submitted an Additional Submission, which was received and found to be compliant on June 25, 2013.
Respondent submitted an Additional Submission, which was received and found to be compliant on June 28, 2013.
On June 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Nature of Domain Name
• Complainant owns seventy-five United States Patent and Trademark Office (“USPTO”) registrations for its CHEVRON mark, dating back to 1939 (Reg. No. 364,683 registered on Feb. 14, 1939). Complainant descends from the Standard Oil Company and has used the CHEVRON mark continuously since 1935, and today offers energy services around the world.
• Respondent registered the <chevroniraq.com> domain name on May 6, 2013.
• Respondent’s <chevroniraq.com> domain name merely adds the geographical designation “Iraq” to the CHEVRON mark.
• Complainant has an active and widespread media presence, as a result of its marketing efforts, which include advertising and promotional materials in media such as newspapers, magazines, and television, resulting in substantial fame of the CHEVRON mark.
Policy ¶ 4(a)(ii): Respondent Lacks a Right or Legitimate Interest in Domain Name
• Respondent is not commonly known by this <chevroniraq.com> domain name because it has not been authorized to use the CHEVRON mark.
• Respondent has failed to make a bona fide offering or legitimate use of the domain name because it resolves to a website that does nothing other than publicize the fact that Respondent is selling the domain name.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration
• Respondent’s use of the famous and well-known CHEVRON mark in this domain name illustrates bad faith in itself.
• Complainant advertises the domain name for sale at the resolving website.
B. Respondent Respondent’s Contentions
Policy ¶ 4(a)(ii): Rights & Legitimate Interests
• Respondent invests in and sells domain names for their value as generic domain names for businesses.
• Respondent has merely registered a domain name that includes that generic term “chevron”—meaning a line or stripe on a uniform—and the term “Iraq”—a country in the Middle East. Respondent is merely using two plain English terms to make this domain name.
Policy ¶ 4(a)(iii): Respondent Lacks Bad Faith
• Respondent makes it clear that this domain name is for sale and that if Complainant does have a real need for this domain name, it should “go ahead and buy it.”
• Respondent registered the domain name with knowledge that Complainant was blacklisted from operating in Iraq by the Iraqi Government. Thus Respondent could not have believed that this domain name would have been of any use to Complainant.
• Laches:
Respondent argues that the domain name was available to the public until May 6, 2013, and at no point up until Respondent bought the domain name did Complainant express any interest in owning it.
Respondent’s Additional Submission
• Respondent restates its conviction that the term “chevron” is an ordinary English dictionary word that Complainant has no right to monopolize. Respondent argues that the “Iraq Ministry of Oil” has authority to give a company a right to practice “oil business,” and without such approval, the entity is considered illegal in Iraq, and any company doing business in Iraq with “Chevron Intellectual Property LLC” violates the law. Respondent argues that Complainant’s property is blacklisted in Iraq, which demonstrates Complainant’s absence of trademark presence in the country. Respondent invites the Panel to contact the Iraq Ministry of Oil to confirm Complainant’s status as blacklisted, and the Panel notes that Respondent includes various e-mail addresses at which the information can be verified.
• Any company can have a business presence in multiple countries, including Complainant; however, because Complainant is aware that it cannot conduct business in Iraq, it cannot claim a domain name reflecting such a business.
• Respondent welcomes payment from Complainant in exchange for the domain name.
• Respondent denies any intent to use the domain name, and reminds the Panel that they have the domain name listed for sale. Respondent argues that Complainant itself does not have any intent to use the domain name, and suggests that instead, Complainant register for a domain name incorporating the geographic term “Kurdistan” to reflect its business in the area.
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.
(4) The panel finds that the Complainant has carried its burden of proof as to all of the elements required above.
Complainant claims that it owns seventy-five USPTO registrations for its CHEVRON mark, dating back to 1939 (Reg. No. 364,683 registered on Feb. 14, 1939). The Complainant explains that it descends from the Standard Oil Company, and today offers energy services around the world. The Panel agrees that Complainant’s strong showing of USPTO registrations is evidence that Complainant has rights in its mark, regardless of where Respondent may truly be located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant next argues that Respondent’s <chevroniraq.com> domain name merely adds the geographical designation “Iraq” to the CHEVRON mark. The Panel also notes that the domain name includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that as a result of using Complainant’s entire CHEVRON mark in the domain name, with the addition of a geographic term and a gTLD, the <chevroniraq.com> domain name is confusingly similar to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part).
While Respondent contends that the <chevroniraq.com> domain name is comprised of a common and descriptive term referring to a “v” shape, and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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 claims in its Complaint and Additional Submission that Respondent is not commonly known by this <chevroniraq.com> domain name. The Panel notes that while Respondent appears to avoid identifying itself in the WHOIS information by listing “None” in the registrant information, Respondent signs its Response through its alleged representative “Adam Kaya.” The Panel finds that none of Respondent’s identities illustrate that it is commonly known by the <chevroniraq.com> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also claims that Respondent has failed to make a bona fide offering or legitimate use of the domain name because it resolves to a website that does nothing other than publicize the fact that Respondent is selling the domain name. The Panel finds that the domain name’s only purpose is to promote the domain name’s sale through auction. See Complainant’s Ex. I. The Panel agrees that Respondent has done nothing bona fide as envisioned by Policy ¶ 4(c)(i) in its use of its domain strictly for purposes of resale, and the Panel further finds that the resale of domain names cannot be a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Registration and Use in Bad Faith
Complainant states in its Additional Submission that the offer of the <chevroniraq.com> domain name for sale is evidence of bad faith. Respondent substantiates that claim in its own Response, asserting that it has no plans or intentions for the use of the domain name, and that it is holding the domain only with the purpose of selling it. The Panel finds that an invitation from Respondent to Complainant as well as to the general public to buy the domain name constitutes evidence of a Policy ¶ 4(b)(i) bad faith scheme to register and use the disputed domain name to cash in on its value to Complainant. See, e.g., World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
The Panel further finds that while Complainant does not explicitly make any arguments under the provisions of Policy ¶4(b), the Policy only requires some showing of bad faith at the time of registration and through the Respondent’s use—the examples in Policy ¶ 4(b) are merely a non-exclusive set of instances in which bad faith may be found. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Complainant alleges that Respondent’s use of the famous and well-known CHEVRON mark in this <chevroniraq.com> domain name illustrates bad faith in itself. The Panel notes that in its Response, Respondent makes it clear that it was aware of the CHEVRON mark, but believed a legal embargo or blacklisting of Complainant from Iraq justified Respondent’s registration of the name. The Panel thus concludes that the CHEVRON mark is famous enough in the eyes of consumers so as to suggest Respondent had actual knowledge of the CHEVRON mark in registering the domain name, and thus registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). But see Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevroniraq.com> domain name be TRANSFERRED from Respondent to Complainant.
Panelist: ROBERT T. PFEUFFER
Dated: July 7, 2013
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