Chevron Intellectual Property LLC v. Mark Slobodzian
Claim Number: FA1311001528422
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Melissa A. Alcantara of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Mark Slobodzian (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevronpage.com> and <chevronwebsite.com>, registered with GODADDY.COM, LLC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2013; the National Arbitration Forum received payment on November 6, 2013.
On November 6, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <chevronpage.com> and <chevronwebsite.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. 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 November 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@chevronpage.com, postmaster@chevronwebsite.com. Also on November 6, 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 November 27, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 asserts that it uses its CHEVRON mark in connection with its global energy services as well as its offering of credit card services. Complainant argues that it has rights in the CHEVRON mark through its registrations of the mark with the USPTO (e.g., Reg. No. 364,683 registered February 14, 1937). The Panel notes that it has previously been determined that a complainant establishes its rights in a mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). It has also been determined that a complainant does not need to register its mark in the respondent’s country of origin in order to prove its rights in the mark under the Policy. 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). Therefore, the Panel holds that Complainant’s registration of the CHEVRON mark with the USPTO is sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i) even though Respondent appears to reside in Hong Kong.
Complainant next asserts that the <chevronpage.com> and <chevronwebsite.com> domain names are confusingly similar to Complainant’s CHEVRON mark because each domain name fully incorporates the mark and merely adds the gTLD “.com” and the generic term “page” or “website.” A domain name’s gTLD is not relevant for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”). A domain name is confusingly similar to a complainant’s mark where the domain name incorporates the mark and merely adds a generic term. See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel finds that each of the <chevronpage.com> and <chevronwebsite.com> domain names contains the CHEVRON mark and merely adds the term “page” or “website.” The Panel finds that these added terms “page” and “website” are generic terms that do not sufficiently distinguish the disputed domain names from Complainant’s CHEVRON mark. Therefore, the Panel holds that the <chevronpage.com> and <chevronwebsite.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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 alleges that it has not authorized Respondent to use its CHEVRON mark in a domain name and that Respondent is not commonly known as <chevronpage.com> or <chevronwebsite.com>. Previous UDRP decisions hold that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii) where there is no evidence in the record, including the WHOIS information, to indicate otherwise and where Complainant allegedly never authorized Respondent to use its mark in a domain name. See, e.g., Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that 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 that 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 the instant proceedings, the Panel notes that the WHOIS information identifies the registrant of the disputed domain names as “Mark Slobodzian,” which does not suggest that Respondent is commonly known as <chevronpage.com> or <chevronwebsite.com>. The Panel finds that nothing else in the record suggests that Respondent is commonly known by either of those names. Further, the Panel takes into consideration Complainant’s allegation that it has not authorized Respondent to use the CHEVRON mark in a domain name. For the foregoing reasons, the Panel holds that Respondent is not commonly known as <chevronpage.com> or <chevronwebsite.com> under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent is not using the disputed domain names for 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), because the domain names resolve to customized parking pages of the registrar, GoDaddy.com, that promote links to goods and services that directly compete with those offered by Complainant under the CHEVRON mark. The <chevronpage.com> domain name resolves to a GoDaddy.com parked site promoting links entitled “Bakken Oil’s Best Buy,” “Valero Credit Card,” “2x Fuel Points,” “Alternative Energy-BP,” “Local Gas Stations,” and “Airline Visa Credit Cards,” among others. The Panel concludes that the <chevronpage.com> domain name is being used to promote links to Complainant’s competitors in the offering of energy products and credit card products and services. The <chevronwebsite.com> domain name resolves to a GoDaddy.com parked site promoting links entitled “Cheap Gasoline Stations,” “Home Propane Tanks,” “Alternative Energy-BP,” “Valero Credit Card,” “Biodiesel Processors,” and “Oil Processing Services,” among others. The Panel concludes that the <chevronwebsite.com> domain name is being used to promote links to Complainant’s competitors in the offering of energy products and credit card products and services. The use of a disputed domain name to promote links to the complainant’s competitors is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Previous panels have also concluded that a respondent is responsible for the content on a parked website resolving from a disputed domain name. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute”). Therefore, the Panel concludes that the use of the disputed domain names to promote links to Complainant’s competitors is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), even though the disputed domain names appear to resolve to parked GoDaddy.com websites.
Complainant has proven this element.
Complainant asserts that Respondent’s use of the disputed domain names to promote Complainant’s competitors disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iii). The Panel notes that according to screenshots submitted by Complainant, each of the disputed domain names resolves to a website promoting links including links entitled “Valero Credit Card” and “Alternative Energy-BP.” The Panel notes that in Ecolab Inc. v. Tabibi, FA 1181839 (Nat. Arb. Forum June 16, 2008), the panel held that respondent had demonstrated bad faith under Policy ¶ 4(b)(iii) where the disputed domain name resolved to a parked website that displayed links to the complainant’s competitors, even though the respondent alleged that it did not have control over the competing hyperlinks that were posted on the at-issue website. See also Gold Medal Travel, supra (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute”). The Panel in the instant proceedings similarly reasons that even though the disputed domain names resolve to GoDaddy.com parked sites, those sites display links to Complainant’s competitors in the global energy and credit card industries, which tends to disrupt Complainants’ business. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the <chevronpage.com> and <chevronwebsite.com> domain names pursuant to Policy ¶ 4(b)(iii).
Complainant next asserts that the disputed domain names attract Internet users for Respondent’s commercial gain, and Respondent has thus demonstrated bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv). The Panel recalls that according to screenshots submitted by Complainant, the disputed domain names resolve to websites that promote links to Complainant’s competitors in the global energy and credit card industries. The Panel notes that previous panels have found that the use of a misleading domain to promote hyperlinks to a complainant’s competitors demonstrates the respondent’s bad faith under Policy ¶ 4(b)(iv) because the respondent presumably receives click-through fees in exchange for its promotion of the competing hyperlinks. See, e.g., TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). In the instant proceedings, the Panel determines that the <chevronpage.com> and <chevronwebsite.com> domain names are likely to lead to confusion with Complainant’s CHEVRON mark since both domain names fully appropriate that mark and merely add the generic terms “page” and “website.” It has previously been held that the content associated with a disputed domain name can demonstrate a respondent’s bad faith under Policy ¶ 4(b)(iv) even though the at-issue website appears to be a parked website. See, e.g., Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). The Panel holds that the use of the <chevronpage.com> and <chevronwebsite.com> domain names to promote links to Complainant’s competitors in the global energy and credit card industries evidences Respondent’s bad faith registration and use of the disputed domain names under Policy ¶ 4(b)(iv even though the at-issue websites appear to be parked GoDaddy.com websites.
Complainant finally alleges that Respondent registered the disputed domain names with actual knowledge of Complainant and its rights in the CHEVRON mark, which is further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). The Panel notes that it has previously been determined that a respondent demonstrates bad faith by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., 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). Previous panels have inferred that the respondent has such actual notice where the at-issue mark is extremely well-known at the time of registration. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the respondent, at the time of registration, had notice of the complainant’s POKÉMON and PIKACHU trademarks given their extreme popularity). The Panel concludes that the CHEVRON mark was well-known when Respondent registered the disputed domain names in August 2013. The Panel finds that Respondent registered the <chevronpage.com> and <chevronwebsite.com> domain names with actual notice of Complainant’s CHEVRON mark, and that Respondent has thus demonstrated bad faith registration and use of the disputed domain names under Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <chevronpage.com> and <chevronwebsite.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 5, 2013
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