Hess Corporation v. Rohan Chaudhari
Claim Number: FA1409001581020
Complainant is Hess Corporation (“Complainant”), represented by Paul J. Reilly of Baker Botts L.L.P., New York, USA. Respondent is Rohan Chaudhari (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hessoilandgas.com>, registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2014; the National Arbitration Forum received payment on September 22, 2014.
On September 26, 2014, Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the National Arbitration Forum that the <hessoilandgas.com> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA has verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 16, 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@hessoilandgas.com. Also on September 26, 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 October 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <hessoilandgas.com> domain name, the domain name at issue, is confusingly similar to Complainant’s HESS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 uses the HESS mark in connection with its business as an integrated oil and gas company. Complainant owns the HESS mark through its trademark registrations with the USPTO (e.g., Reg. No. 823,393 registered July 25, 1967). Such registrations are sufficient to establish rights in the HESS mark pursuant to Policy ¶ 4(a)(i) requirements. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
The <hessoilandgas.com> domain name is confusingly similar to Complainant’s HESS mark because Respondent has simply added the generic words “oil and gas” to the mark. The disputed domain name differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Previous panels have generally found that a domain name differing from a mark by only the addition of a few generic terms does not escape confusing similarity, and that the affixation of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)). As such, the disputed domain name is confusingly similar to Complainant’s HESS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <hessoilandgas.com> domain name. The WHOIS information identifies “Rohan Chaudhari” as the registrant of the disputed domain name. Further, Respondent is neither licensed nor authorized to use the HESS mark. Respondent has failed to submit a response to refute any of Complainant’s contentions and, given the lack of evidence to infer otherwise, the Panel finds that Respondent is not commonly known by the <hessoilandgas.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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).
Respondent has not demonstrated any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Respondent previously used the disputed domain name to redirect Internet users to an unrelated search web page. Previous panels have refused to find a bona fide offering of goods or services, or a legitimate noncommercial or fair use where the disputed domain name was used to forward Internet users to an unrelated use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”) Therefore, Respondent’s previous use of the disputed domain name did not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Additionally, Respondent currently does not make an active use of the disputed domain name. Respondent’s disputed domain name resolves to a not resolvable page and thus is not an active use of the disputed domain name. Generally, panels have found that failure to make an active use of the disputed domain name is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question). Consequently, the Panel finds that Respondent’s disputed domain name lacks a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent uses the disputed domain name to intentionally divert Internet users to Respondent’s own website. Typically, panels have found that such behavior indicates a finding of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). For that reason, the Panel finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent currently does not make an active use of the disputed domain name, which is further evidence of bad faith under Policy ¶ 4(a)(iii). Previous panels generally did not hesitate to find evidence of bad faith in a respondent that does not make an active use of a disputed domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Respondent’s disputed domain name currently resolves to a not resolvable web page and thus is not an active use. With that being said, the Panel finds that Respondent is continuing to use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, due to the fame and extensive use of the HESS mark, Respondent had actual or constructive knowledge of Complainant’s rights in the mark before registering the disputed domain name. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hessoilandgas.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 25, 2014
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