Exxon Mobil Corporation v. Exxonelevator / Kehan Xu
Claim Number: FA1310001524160
Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Exxonelevator / Kehan Xu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <exxonelevator.com> and <exxonelevator.net>, registered with Bizcn.com, Inc.
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 October 14, 2013; the National Arbitration Forum received payment on October 14, 2013. The Complaint was submitted in both Chinese and English.
On October 14, 2013, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonelevator.com> and <exxonelevator.net> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 October 21, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 12, 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@exxonelevator.com, postmaster@exxonelevator.net. Also on October 21, 2013, the Chinese language 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 November 15, 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EXXON mark. Respondent’s domain names are confusingly similar to Complainant’s EXXON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <exxonelevator.com> and <exxonelevator.net> domain names, and that Respondent registered and uses the domain names 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 contends that it is the world’s largest publicly traded international oil and gas company. Complainant is the owner of a trademark registration with the USPTO for the EXXON mark (Reg. No. 884,420, registered January 20, 1970) and trademark registrations with China’s SAIC for the EXXON mark (e.g., Reg. No. 76,864, registered May 2, 1979). The Panel notes that Respondent appears to reside and operate in China. Therefore, the Panel concludes that Complainant’s registration of the EXXON mark with the USPTO and China’s SAIC sufficiently evidences its rights in the mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <exxonelevator.com> and <exxonelevator.net> domain names incorporate the EXXON trademark in its entirety, adding only the generic word “elevator” and a gTLD “.com” or “net.” Respondent’s addition of a generic word to Complainant’s mark does not differentiate the disputed domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). Further, Respondent’s inclusion of gTLDs to Complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) determination. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). Consequently, the Panel finds that Respondent’s <exxonelevator.com> and <exxonelevator.net> domain names are confusingly similar to Complainant’s EXXON mark under Policy ¶ 4(a)(i).
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 contends that Respondent is not commonly known by Complainant’s EXXON trademark. Complainant notes that the WHOIS information identifies Respondent as “Exxonelevator / Kehan Xu.” Complainant also argues that Respondent is not affiliated with Complainant in any way and that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel found that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” Therefore, the Panel finds that even though Respondent appears to be known by the disputed domain names in the WHOIS record, because there is no additional evidence outside of the WHOIS record demonstrating that Respondent is known by the disputed domain names, Respondent is not commonly known by the <exxonelevator.com> and <exxonelevator.net> domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s <exxonelevator.com> and <exxonelevator.net> domain names previously pointed to a page that promoted Respondent’s commercial elevator/escalator business. Respondent’s <exxonelevator.com> and <exxonelevator.net> domain names previously led to a Chinese language website appearing to support its own elevator/escalator business. Therefore, the Panel determines that Respondent’s prior competing use of the disputed domain names shows that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant claims that the <exxonelevator.com> and <exxonelevator.net> domain names are currently inactive. Respondent’s domain names lead to no active page, and the web browser provides an error message stating “[t]he website declined to show this webpage.” Id. A respondent’s failure to make an active use of a domain name demonstrates that respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <exxonelevator.com> and <exxonelevator.net> domain names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that by previously using Complainant’s EXXON mark to promote an unrelated business, Respondent has attempted to commercially benefit unfairly from the goodwill associated with Complainant’s trademark, and this conduct of diversion based on likelihood of confusion shows bad faith registration and use. Respondent’s <exxonelevator.com> and <exxonelevator.net> domain names previously led to a Chinese language website appearing to support its own elevator/escalator business. It is not unreasonable to infer that Respondent may commercially benefit through its use of the disputed domain names. Because the Panel finds that Respondent has attempted to attract Internet users to its own competing websites for commercial gain, the Panel finds that Respondent has registered and is using the <exxonelevator.com> and <exxonelevator.net> domain names in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant argues that the <exxonelevator.com> and <exxonelevator.net> domain names are currently inactive. The Panel notes that Respondent’s disputed domain names lead to inactive pages stating, “The website declined to show this webpage.” In Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panel concluded that respondent’s failure to make active use of its domain name in the three months after its registration indicated that respondent registered the disputed domain name in bad faith. Thus, the Panel finds that Respondent’s failure to make an active use of the disputed domain names demonstrates that Respondent has registered and is using its <exxonelevator.com> and <exxonelevator.net> domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant asserts that Respondent’s registration of the <exxonelevator.com> and <exxonelevator.net> domain names were with knowledge of Complainant’s rights. Complainant argues that its EXXON mark is famous and that Respondent used its famous EXXON mark to commercially benefit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed 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).
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 <exxonelevator.com> and <exxonelevator.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 27, 2013
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