Chevron Intellectual Property LLC v. Buchi Anderson / Guiness
Claim Number: FA1407001570792
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Buchi Anderson / Guiness (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevronoilandgas.com>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of his or her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 21, 2014; the National Arbitration Forum received payment July 22, 2014.
On July 21, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <chevronoilandgas.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2014, 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@chevronoilandgas.com. Also on July 23, 2014, 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 August 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant has rights in the CHEVRON mark under Policy ¶ 4(a)(i).
a. Complainant is one of the world’s leading integrated energy companies. Complainant is active in all aspects of the global energy industry, including research, exploration, production and transportation of crude oil and natural gas.
b. Complainant owns some 70 active registrations that appear to have begun as early as 1905 for the CHEVRON family of marks with the United States Patent and Trademark Office (“USPTO”). See Complainant’s Exhibit C.
c. Complainant also owns at least 20 trademark registrations for the CHEVRON mark in Nigeria. See Complainant’s Exhibit E.
d. Respondent’s <chevronoilandgas.com> domain name incorporates Complainant’s CHEVRON mark in its entirety with the addition of the terms “oil and gas,” which are the industries most often associated with complainant. Respondent also adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <chevronoilandgas.com> domain name.
a. Respondent’s use of the disputed domain name has not been authorized or approved by Complainant and Respondent is not commonly known by the disputed domain name.
b. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a noncommercial or fair use. Respondent previously used the disputed domain name to resolve to a website that advertised “Chevron Nigeria Limited Open Jobs” as part of a website that mimics Complainant’s official website. Respondent’s previously resolving website also attempted to provide information as to how to apply for a job opportunity with Chevron in Nigeria.
c. Respondent’s current non-use of the disputed domain name does not establish rights or legitimate interests in the disputed domain name.
3. Respondent registered and is using the <chevronoilandgas.com> domain name in bad faith.
a. Respondent uses the disputed domain name to disrupt Complainant’s business.
b. Respondent previously used the disputed domain name to cause Internet users to mistakenly believe they were applying for a job with Complainant or its subsidiary. Respondent’s prior use of the disputed domain name also attracted Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CHEVRON mark. Respondent’s use of the “oil and gas” terms further implies that the associated website is connected with Complainant.
c. Respondent had actual knowledge of Complainant’s CHEVRON mark when Respondent registered the disputed domain name.
1. Respondent registered the <chevronoilandgas.com> domain name March 28, 2013.
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used and then passively held the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant states that it is one of the world’s leading integrated energy companies, active in all aspects of the global energy industry, including research, exploration, production and transportation of crude oil and natural gas. Complainant asserts that it has rights in the CHEVRON mark in association with its business under Policy ¶ 4(a)(i). Complainant asserts that it owns some 70 active registrations for the CHEVRON mark with the USPTO (e.g., Reg. No. 4,297,887). See Complainant’s Exhibit C. Complainant states that it also owns at least 20 trademark registrations for the CHEVRON mark in Nigeria (e.g., Reg. No. 20,953 registered September 18, 1974). See Complainant’s Exhibit E. Panels have continuously found that evidence of a registration for a given mark irrespective of where respondent is located, is sufficient to establish rights in that mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel finds that Complainant established rights in the CHEVRON mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <chevronoilandgas.com> domain name incorporates Complainant’s CHEVRON mark in its entirety with the addition of the terms “oil and gas,” which are the industries most often associated with Complainant, who contends that Respondent also adds the gTLD “.com.” In Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) the panel found 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. Additionally, panels have continuously found that a gTLD is irrelevant to a Policy ¶ 4(a)(i) confusingly similarity evaluation. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel finds that Respondent’s <chevronoilandgas.com> domain name is confusingly similar to Complainant’s CHEVRON mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in the <chevronoilandgas.com> domain name under Policy ¶ 4(c)(ii). Complainant states that Respondent’s use of the disputed domain name has not been authorized or approved by Complainant and thus Respondent is not commonly known by the disputed domain name. The Panel notes the WHOIS information for the disputed domain name to see that “Buchi Anderson” is listed as registrant. Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant next claims that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a noncommercial or fair use. Complainant states that Respondent previously used the disputed domain name to resolve to a website that advertises “Chevron Nigeria Limited Open Jobs” as part of a website that mimicked Complainant’s official website. Complainant further claims that Respondent’s resolving website attempted to provide information as to how to apply for a job opportunity with Chevron in Nigeria. The Panel notes Complainant’s screen shot provided in Complainant’s Complaint on page 7. Further, the Panel observes that Respondent’s previously resolving website displayed the heading “CNL Jobs” and the title “Chevron Nigeria.” The Panel notes that panels have frequently found that using a confusingly similar domain name to resolve to a website that aims at replicating complainant’s website does not establish rights or legitimate interests in a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). In addition, Respondent’s previously resolving website to Complainant’s “Career Home Page,” shown in Complainant’s Exhibit K, shows that Respondent uses a similar layout and displays Complainant’s trademark prominently. The Panel therefore finds that Respondent’s prior use of the disputed domain name does not confer rights to Respondent under Policy ¶¶ 4(c)(i) or (iii).
Complainant states that following a takedown request submitted by Complainant, Respondent removed the content previously displayed on Respondent’s website resolving from the <chevronoilandgas.com> domain name. Failure to associate content with a domain name makes it clear that the respondent does not have rights or legitimate interests. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent’s non-use of the <chevronoilandgas.com> domain name is neither a Policy ¶¶ 4(c)(i) nor 4(c)(iii) bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent registered and is using the <chevronoilandgas.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent previously used the disputed domain name to disrupt Complainant’s business by copying the look of Complainant’s official website and offering an opportunity to apply for employment with, what Internet users falsely assume, is Complainant’s company. The panel in Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) previously concluded that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii). Likewise, the Panel here, finds that Respondent’s prior use of the <chevronoilandgas.com> domain name to fraudulently replicate the look of Complainant’s website indicates bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant additionally claims that Respondent’s prior use of the <chevronoilandgas.com> domain name indicates bad faith use and registration under Policy ¶ 4(b)(iv). Complainant asserts that Respondent used the disputed domain name to cause Internet users to mistakenly believe they were applying for a job with Complainant or its subsidiary. Complainant argues that Respondent’s prior use of the disputed domain name also attracted Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s CHEVRON mark. Further, Complainant states that Respondent’s use of the “oil and gas” terms implies that the associated website is connected with Complainant. The panel inTower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) concluded that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website. The Panel notes Respondent’s use of Complainant’s logo on the website that previously resolved from the disputed domain name. Based on prior panel decisions, the Panel here finds that Respondent’s previous use of the disputed domain name aimed at attracting Internet users to Respondent’s resolving website and thereby confused them as to Complainant’s affiliation with the content on the website, and commercially profited from that confusion, thus indicating bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant contends that the content previously displayed on the disputed domain name was removed after Complainant’s request. The Panel notes Complainant has not provided an updated screen shot of the website resolving from the disputed domain name. The Panel therefore presumes that Respondent’s disputed domain name is inactive. Previous panels have continuously found that failing to make an active use of a disputed domain name indicates bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds accordingly.
Lastly, Complainant asserts that Respondent had actual knowledge of Complainant’s CHEVRON mark when Respondent registered the <chevronoilandgas.com> disputed domain name. Complainant asserts that its CHEVRON mark is famous and Respondent registered the disputed domain name after Complainant’s rights had already been well established. Panels have come to a consensus that constructive knowledge alone will not justify a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel finds that Respondent registered the <chevronoilandgas.com> disputed domain name with actual knowledge of Complainant’s rights, and therefore finds bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <chevronoilandgas.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 26, 2014
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