Chevron Intellectual Property LLC v. Stanley Bill
Claim Number: FA1308001517277
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bruce A. McDonald of Buchanan Ingersoll & Rooney PC, Washington, D.C., USA. Respondent is Stanley Bill (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-petroleum.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2013; the National Arbitration Forum received payment on August 29, 2013.
On September 5, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <chevron-petroleum.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 September 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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-petroleum.com. Also on September 10, 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 October 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 currently owns the 75 U.S. trademark and service mark registrations covering the CHEVRON trademark. These date back to registrations of CHEVRON for petroleum products issued in 1939 (U.S. Reg. 364,683) and 1945 (U.S. Reg. 416,133). Today, the name CHEVRON, often with Complainant’s “Hallmark” logo illustrated below (collectively the “CHEVRON mark”), and sometimes with other words and components – is registered in the United States for goods and services spanning more than a dozen International Classes.
Chevron Hallmark
Complainant also owns International Registrations for the CHEVRON mark with protection extending into 44 countries under the Madrid Protocol, in addition to active registrations in over 100 countries.
Statement of the Facts
A. Complainant’s Use of CHEVRON Trademark
Complainant is one of the world's leading integrated energy companies with a global workforce of approximately 57,000 company employees and 3,800 service station employees. Complainant is active in all facets of the global energy industry, including exploration, production and transportation of crude oil and natural gas; refining, marketing and distribution of transportation fuels and lubricants; manufacturing and sale of petrochemical products; generation of power and production of geothermal energy; providing energy efficiency solutions; and development of future energy resources, including research for advanced biofuels.
Complainant uses its CHEVRON mark in all aspects of its business as illustrated on the company’s website at www.chevron.com, the home page of which currently appears as follows:
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Complainant and its predecessors have used the CHEVRON mark continuously since 1935. See U.S. Reg. 364,683. The mark appears prominently in Complainant’s advertising and promotional materials, including but not limited to newspapers, magazines and television, at a cost of tens of millions of dollars per year. Samples of Complainant’s current print advertising are submitted herewith, and current television advertisements may be viewed at www.chevron.com/about/advertising. Complainant also has an active presence on the Internet, where it interacts with consumers and the general public at websites including www.chevron.com, www.chevroncreditcard.com, and others. Complainant is also conducting a public awareness campaign under the slogan “We Agree,” illustrated as follows at www.chevron.com/weagree:
<<image removed>>
In addition to trademark registrations, Complainant owns many domain names incorporating the CHEVRON mark, in addition to CHEVRON.COM, which it uses in all aspects of its business, including public outreach. See, e.g., www.chevroncreditcard.com.
B. Registration of Disputed Domain Name
The disputed domain name was anonymously registered on March 13, 2013. After the filing of this UDRP complaint, the privacy shield was lifted and an amended complaint was filed.
C. Use of Disputed Domain Name
The disputed domain name at the time this complaint was filed resolved to the following web page at www.chevron-petroleum.com stating that the “account” has been “suspended”
<<image removed>>
Legal Basis for Complaint
Complainant is entitled to transfer of the disputed domain name because (1) the name is confusingly similar to Complainant’s famous mark; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and used in bad faith.
A. Confusing Similarity
As a result of extensive use and advertising since 1935, CHEVRON is a “famous mark” within the meaning of U.S. and international trademark law. See Chevron Corp. v. Fenton, FA 096465 (Nat. Arb. Forum March 1, 2001) (recognizing CHEVRON as famous mark). The disputed domain name is identical to Complainant’s Mark but for addition of the generic word PETROLEUM which not only fails to distinguish the disputed domain name from Complainant’s Mark but capitalizes on public association of that mark with the products for which it is famous. See Chevron Intellectual Property LLC v. Andre Schneider / Domcollect AG, FA 1446021 (Nat. Arb. Forum July 5, 2012) (transferring CHEVRONPETROLEUM.COM). This fact is sufficient without more to establish confusing similarity under the UDRP. Magnum Piering, Inc. v. Mudjackers & Wilson, WIPO Case No. D2001-1525; Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127; Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903; BBG Communications, Inc. v. Posner, WIPO Case No. D2012-1681; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
B. Rights or Legitimate Interests
Under Paragraph 4(a)(ii) of the UDRP and Rule 3(b)(ix)(2), a right or legitimate interest in the disputed domain name may be negated by a showing (i) that Respondent's use of, or demonstrable preparations to use, the domain name has not been in connection with a bona fide offering of goods or services; (ii) that Respondent (as an individual, business, or other organization) is neither commonly known by the domain name nor has it acquired trademark or service mark rights in the domain name; and/or (iii) that Respondent has not made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Registrant has no right or legitimate interest in the name “Chevron” and no authorization, consent or approval to use Complainants’ Mark. The absence of an operative website corresponding to the disputed domain name evinces a lack of any right or legitimate interest. See Nenê f/k/a Maybyner Rodney Hilario v. Master, Host, FA0702000924563 (Nat. Arb. Forum April 10, 2007) (holding that absence of content at website evinced a lack of rights or legitimate interests in the disputed domain name); accord, LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002); Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000)(same). Respondent is making neither a bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii). Nor is Respondent “commonly known” by any name that includes the CHEVRON mark within the meaning of Policy 4(c)(ii).
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances may constitute evidence of use and registration in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
At a minimum, Respondent is in violation of subparagraph (iv) above because there is no colorable rationale for use and registration of the disputed domain name other than to attract, for commercial gain, Internet users to Respondent’s website (if and when Respondent posts a website) or other on-line location (i.e., use of email addresses containing the name “Chevron”) by creating a likelihood of confusion with Complainant’s Mark. “It is well known that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith use and registration.” Mahindra & Mahindra Ltd. v. Pace, D2011-2189 (WIPO Feb. 19, 2012); Pfizer Inc. v. NA, D2005-0072 (WIPO April 12, 2005); AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, D2002-0440 (WIPO Aug. 28, 2002); America Online, Inc. v. Anson Chan, D2001-0004 (WIPO Feb. 22, 2001); Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000); Research in Motion Limited v. Dustin Picov, D2001-0492 (WIPO May 31, 2001).
Further, there can be no doubt on the issue of bad faith in view of the anonymous registration of the domain name at issue. See U.S. Auto Parts Network, Inc. v. Alichec Inc., FA 1487371 (NAF Apr. 17, 2013) (respondent's use of incomplete WHOIS contact information serves as evidence of bad faith intent because it demonstrates desire to avoid being held accountable); accord, Alaska Air Group, Inc. v. Private Whois Service, FA 1488941 (NAF April 10, 2013).
In short, the only feasible explanation for Respondent’s registration of the disputed domain name is that Respondent intends to cause confusion, mistake and deception by means of the disputed domain name. Accordingly, any use of the disputed domain name for an actual website could only be in bad faith. See Vevo LLC v. Ming Tuff, FA 1204001440981 (Nat. Arb. Forum May 29, 2012) (“Respondent registered and failed to use the VEVO.XXX domain name in bad faith pursuant to Policy ¶4(b)(iv) because it intended to take commercial advantage of Internet users’ mistakes as to the source of the disputed domain name based on confusion created by Respondent.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 it uses its CHEVRON mark in all aspects of its business as an integrated energy company that produces, sells, transports, and markets crude oil and natural gas, transportation fuels and lubricants, and petrochemical products. Complainant owns the CHEVRON mark through registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 364,683 registered February 14, 1939). Complainant’s registration of a mark with the USPTO is sufficient establish Complainant’s rights in the mark pursuant to the Policy. See, e.g., Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). Complainant is not required to register its mark in Respondent’s country of residence in order to establish rights in the mark under the Policy. See, e.g., Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant’s registration of its CHEVRON mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶4(a)(i).
Complainant claims the <chevron-petroleum.com> domain name is confusingly similar to its CHEVRON mark, because the domain name fully incorporates the mark and merely adds the term “petroleum,” which is descriptive of Complainant’s products. The disputed domain name adds the generic top-level domain (“gTLD”) “.com” as well as a hyphen in between the words “Chevron” and “petroleum.” The addition of a gTLD or a hyphen does not adequately distinguish the domain name from a complainant’s mark in so far as the Policy is concerned. 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 Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶4(a)(i) confusingly similar analysis.”). Adding a descriptive term about Complainant’s business does not distinguish the domain name from the mark. 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 word “petroleum” is descriptive of the products marketed and sold under Complainant’s CHEVRON mark. The <chevron-petroleum.com> domain name is confusingly similar to Complainant’s CHEVRON mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii), because Complainant has not authorized Respondent to use its famous CHEVRON mark in a domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. In this case, Complainant has not authorized Respondent’s use of its CHEVRON mark. The WHOIS information identifies the registrant of the <chevron-petroleum.com> domain name as “Stanley Bill,” (once the privacy registration was dropped) which suggests Respondent is known by the registrant’s name rather than <chevron-petroleum.com> disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent lacks rights or legitimate interests in the <chevron-petroleum.com> domain name pursuant to Policy ¶4(a)(ii), because the domain name resolves to an inactive website. A screenshot embedded within the Complainant suggests the at-issue website states only “Account Suspended: This Account Has Been Suspended.” The Panel declines to accept this interpretation. A domain name has more uses than merely acting as a location for a web site.
Respondent originally acquired the disputed domain name using a nominee. Obviously, the nominee acquired no rights to the domain name because the nominee wasn’t using it. Respondent likewise acquired no rights to the domain name because Respondent didn’t disclose its identity. This alone is sufficient to find Respondent has no rights or legitimate interests with respect to the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant first suggests Respondent’s inactive holding of the <chevron-petroleum.com> domain name demonstrates bad faith registration and use under Policy ¶4(b)(iv), because the domain name creates a likelihood of confusion with Complainant’s CHEVRON mark and Respondent could not have registered the domain name in question for any use other than its own improper commercial gain. However, Complainant failed to demonstrate Respondent diverted Internet users to respondent’s own website for respondent’s commercial benefit under Policy ¶4(b)(iv). See, e.g., Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Without more (such as a suggestion of a period of time), failing to make an active use of the <chevron-petroleum.com> domain name by having a web site does not demonstrate bad faith registration and use under Policy ¶4(b)(iv). Domain names can be used for other purposes.
The indicators of bad faith listed in Policy ¶4(b) are not exhaustive and a respondent’s bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the disputed domain name. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
The registration of a domain name by a nominee in a commercial context raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chevron-petroleum.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, October 3, 2013
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