Chevron Intellectual Property LLC v. Ancelet Dept / Ancelet
Claim Number: FA1410001582869
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Ancelet dept / Ancelet (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vouchercertificatesforchevronfuel.com>, <sunocoshellchevrongas.com>, <shellandchevronrewards.com>, <shellandchevroncoupondepot.com>, <getyourgasonchevron.com>, <gasgiftcardsforchevron.com>, <fuelrewardsprogramchevron.com>, <fuelrewardsforchevron.com>, <exxonchevronrewards.com>, <couponvouchersforchevron.com>, <couponsforchevronusa.com>, <chevronvoucherscodesusa.com>, <chevronrewardsusa.com>, <chevronrewardscenter.com>, <chevrongiftcardsdepot.com>, and <chevrongasgiftcardsnation.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 2, 2014.
On October 2, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <vouchercertificatesforchevronfuel.com>, <sunocoshellchevrongas.com>, <shellandchevronrewards.com>, <shellandchevroncoupondepot.com>, <getyourgasonchevron.com>, <gasgiftcardsforchevron.com>, <fuelrewardsprogramchevron.com>, <fuelrewardsforchevron.com>, <exxonchevronrewards.com>, <couponvouchersforchevron.com>, <couponsforchevronusa.com>, <chevronvoucherscodesusa.com>, <chevronrewardsusa.com>, <chevronrewardscenter.com>, <chevrongiftcardsdepot.com>, and <chevrongasgiftcardsnation.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@vouchercertificatesforchevronfuel.com, postmaster@sunocoshellchevrongas.com, postmaster@shellandchevronrewards.com, postmaster@shellandchevroncoupondepot.com, postmaster@getyourgasonchevron.com, postmaster@gasgiftcardsforchevron.com, postmaster@fuelrewardsprogramchevron.com, postmaster@fuelrewardsforchevron.com, postmaster@exxonchevronrewards.com, postmaster@couponvouchersforchevron.com, postmaster@couponsforchevronusa.com, postmaster@chevronvoucherscodesusa.com, postmaster@chevronrewardsusa.com,
postmaster@chevronrewardscenter.com, postmaster@chevrongiftcardsdepot.com, and postmaster@chevrongasgiftcardsnation.com. Also on October 3, 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.
A timely Response was received and determined to be complete on October 23, 2014.
On October 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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 disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Policy Paragraph 4(a)(i)
Complainant contends that it is one of the word’s leading integrated energy companies which maintains a significant presence in North America. Complainant operates through thousands of retail gasoline service stations nationalwide under the CHEVRON trademark. Complainant adopted “Chervron” as its corporate name in the 1970’s and uses its registered CHEVRON mark, which dates back to 1935 in all aspects of its business.
Complainant’s website that resolves from www.chevron.com illustrates all aspects of its business. Also, at the website that resolves from Complainant’s www.chevroncreditcard.com, Complainant advertises and offers credit card services in connection with its CHEVRON mark at which as part of its credit card services, Complainant also offers a fuel credits program that is promotional in nature and provides credit card users with a fuel credit reward for every use of a card.
Complainant further contends that all of the disputed domain names were registered between May 21, 2014 and June 2, 2014, incorporate Complainant’s CHEVRON mark, but do not connect to any website for now.
Complainant argues that Respondent has registered and is using the disputed Domain Names without rights or legitimate interests in any of them. Respondent is not actually known by any of these disputed domain names. Respondent’s non-use of the domain names creates no right in the domain names.
Complainant further contends that it has not authorized the use of its CHEVRON mark as part of the disputed Domain Names and Complainant further alleges that Respondent registered the disputed Domain Names seeking to generate advertising revenue for Respondent by causing consumers to believe that they are accessing websites owned by, or otherwise affiliated with Complainant.
Based on these contentions, Complainant alleges that:
a. Respondent’s registered disputed Domain Names are confusingly similar to the Complainant’s CHEVRON Marks;
b. Respondent has no rights or legitimate interests in its registered Domain Names;
c. Respondent registered and uses the disputed Domain Names in bad faith.
B. Respondent
Respondent consents to the transfer of the disputed Domain Names to the Complainant. In correspondence to the Panel, Respondent claims that it is the small business that generates leads for affiliate networks through e-mails. The Respondent contends that the disputed Domain Names were created automatically by a software that chooses domains that may be related to a campaign. The disputed Domain Names were shut down and will not be used for any promotion.
Complainant has rights in the CHEVRON mark through its registration of such mark with the USPTO and utilizing the Madrid International Trademark System, where the national and international trademark registrations and uses of the CHEVRON mark predates delegation of the disputed Domain Names.
Complainant is one of the word’s leading integrated energy companies which maintains a significant presence in North America. Complainant operates through thousands of retail gasoline service stations nationalwide under the CHEVRON trademark. Complainant adopted “Chervron” as its corporate name in the 1970’s and uses its registered CHEVRON mark, which dates back to 1935 in all aspects of its business. As the result of extensive use and advertising since 1935 the CHEVRON mark has gained high degree of recognition among the public and may be regarded as a “famous mark” within the meaning of U.S. and international trademark law.
As a part of the promotion of its CHEVRON mark Complainant operates the website <chevroncreditcard.com> which is used as an online platform at which Complainant advertises and offers credit card services in connection with its CHEVRON mark at which as part of its credit card services, Complainant also offers a fuel credits program that is promotional in nature and provides credit card users with a fuel credit reward for every use of a card.
Respondent which is involved in the affiliate marketing business unequivocally consents to transfer the domain name to Complainant.
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.
Preliminary Procedural Issue: Consent to Transfer
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
The Complainant has not accepted the Respondent’s implicit offer of a settlement. Accordingly, there is no settlement agreement, and termination of the proceeding on the grounds of settlement pursuant to paragraph 17 of the Rules has no application.
A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems’ proved the three elements of paragraph 4(a) of the Policy.
The Panel notes that there may well be circumstances in which the first option, of ordering a transfer of the domain name to the complainant based on the respondent’s consent without reviewing the facts supporting the claim, could be appropriate. For example, where the complainant agrees to the respondent’s consent and order of transfer, or where a decision on a case of substantial complexity or size might entail delay, the panel in its discretion may decide to order a transfer without consideration of the applicable requirements and the facts. It is this Panel’s view that circumstances warranting a mere order of transfer without more are not present in the present case. The second option, of declaring that the requisite elements are deemed to have been met due to the Respondent’s consent to transfer, is inappropriate here, where the Respondent does not explicitly admit the elements.
Paragraph 10 of the Rules sets out the general powers of the Panel. Paragraph 10(a) states that the “Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules” and Paragraph 10(c) states that the “Panel shall ensure that the administrative proceeding takes place with due expedition.”
It has been argued that “due expedition” means that a panel should not diffuse its energy on matters which do not require a decision. It has also been argued that consent-to-transfer requests should not mask the activities of serial cybersquatters.
Therefore the Panel here notes that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Considering all the circumstances of the present case, the Panel will proceed to a decision on the merits, and consideration of the three requisite elements under paragraph 4(a) of the Policy.
Complainant has used CHEVRON for many years to advertise and promote the products the energy products that it produces, mines, harvests, or generates, and later markets and sells to consumers. As a part of a series of the CHEVRON national and international trademark registrations Complainant has registered the mark with the USPTO (e.g., Reg. No. 364,683, registered Feb. 14, 1939). The Panel finds that that Complainant’s trademark registrations and specifically USPTO trademark registration are sufficient evidence of Policy ¶ 4(a)(i) rights as USPTO registrations have long been held to satisfy the UDRP. See 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 <vouchercertificatesforchevronfuel.com>, <getyourgasonchevron.com>, <gasgiftcardsforchevron.com>, <fuelrewardsprogramchevron.com>, <fuelrewardsforchevron.com>, <couponvouchersforchevron.com>, <couponsforchevronusa.com>, <chevronvoucherscodesusa.com>, <chevronrewardsusa.com>, <chevronrewardscenter.com>, <chevrongiftcardsdepot.com>, and <chevrongasgiftcardsnation.com> domain names put descriptive and generic terms around the CHEVRON mark but remain confusingly similar and they fully incorporate the easily recognizable CHEVRON mark which is the distinctive element in the disputed Domain Names.
The Panel finds that the addition of terms related to the CHEVRON mark, such as “gas” or “fuel” amplify confusing similarity in the same way as generic terms such as “coupons,” “vouchers,” or “rewards.” See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
Complainant notes that the <sunocoshellchevrongas.com>, <shellandchevronrewards.com>, <shellandchevroncoupondepot.com>, and <exxonchevronrewards.com> domain names all combine Complainant’s mark with the mark of a competitor, along with generic terms, in a way that creates the false suggestion that Complainant is associating with these competitors.
The Panel deems that Respondent’s coupling of the CHEVRON mark with competing marks such as SHELL, SUNCO, or EXXON is not necessarily a method of distinguishing the domain names from the mark and such coupling does not impair the distinctive nature of the CHEVRON mark in the Disputed Domain Names. See, e.g., Chevron Intellectual Property LLC v. Ryan G Foo / PPA Media Services, FA 1572486 (Nat. Arb. Forum Sept. 16, 2014) (finding that the combination of the TEXACO and CHEVRON marks was insufficient to create a distinctive domain name).
The Panel therefore finds all sixteen domain names to be confusingly similar to the CHEVRON mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent is not actually known by any of these disputed domain names and this is supported by the WHOIS registration profiles of the disputed Domain Names available in the file.
The Panel notes that Respondent has admitted in its response that it both registered these domain names and that Complainant is within its rights to hold them. As such, the Panel finds it is uncontroverted that Respondent is not commonly known by these domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
The Panel determines that the Respondent is not commonly known by the CHEVRON name and he has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use Complainant’s CHEVRON mark in the disputed Domain Names or otherwise. The disputed Domain Names are neither generic nor descriptive.
The Panel acknowledges that the record shows all of the domain names resolve to “error” pages. The panel finds that Respondent’s non-use of the domain names creates no right in the domain names. See Compl., at Attached Ex. L In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004), the panel held that the inactive holding of Internet domain names did not create a viable right or legitimate interest of a domain name because it constituted neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In light of that the Panel does not admit the legitimate interest of the Respondent to use a trademark that belongs to a third party and finds that Respondent holds no viable right in the disputed Domain Names under Policy ¶ 4(a)(ii).
Finally, the Complainant must show that the Respondent both registered and is using the domain name in bad faith. Paragraph 4(a)(iii) of the Policy.
A non-exhaustive list of what constitutes bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv), which indicates that bad faith exists where the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
In correspondence to the Panel, Respondent claims that it is the small business that generates leads for affiliate networks through e-mails. The Respondent contends that the disputed Domain Names were created automatically by a software that chooses domains that may be related to a campaign.
Thus, it may be anticipated that the conflicting Domain Names were created within an affiliate marketing program.
Affiliate marketing is the term used to describe a revenue-sharing plan where an online automated marketing program lets Webmasters place an advertiser’s banner ads or buttons on their own Web site. Webmasters will receive a referral fee or commission from conversions when a customer has clicked the affiliate link and performs the desired action, such as make a purchase or opt-in for downloads or newsletters on the advertiser's site. Advertisers invest in affiliate programs for lead generation, and, of course, sales.
The payouts for Webmasters also varies, but in the most common forms the affiliate is paid per click, each time a person clicks the ad (pay-per-click) or you may be paid a commission when a sale is made (pay-per-sale) or you might be paid by lead (pay-per-lead).
Certainly, this is the legal business and Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.[*]
In this very case Complainant believes that Respondent is likely using the domain names to profit off the likelihood Internet users would assume that Complainant and the CHEVRON mark have some association with the websites associated with Respondent’s domain names.
In the context of evaluation the likelihood of confusion has to be appreciated globally, taking account of all relevant factors and the more distinctive the earlier mark the greater would be the likelihood of confusion. Where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. See Ellerman Investments Ltd. and another v. C-Vanci [2006] EWHC 1442, Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc., /Titan Net / NOLDC, Inc, WIPO Case No. D2006-0808) and PRL USA Holdings, Inc. v. Yan Shif WIPO Case No. D2006-0700.
As Respondent does not have any business relationship, or any other ties with the Complainant, and given that the disputed Domain Names incorporate the Complainant’s trademark, Internet users are highly likely to be confused as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent in all likelihood registered and is using the disputed domain name to profit from the users’ confusion with Complainant’s mark.
The Panel does find that in this case there is a very strong inference that the Respondent’s purpose of registering the domain name was for commercial gain in bad faith within the meaning of the Policy.
The Panel notes that it appears that the disputed Domain Names domain names have absolutely no active use. Still this Panel finds that Respondent’s failure to develop a website does not bar a finding of bad faith because by failing to use the domain names in a reasonable time Respondent’s registration of confusingly similar domain names can be construed as having been in bad faith with an intent to sit on and avoid using those domain names in bad faith. See, e.g., Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Finally the Panel notes that there is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
Therefore, the Panel finds that Respondent registered and uses the disputed Domain Names in a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vouchercertificatesforchevronfuel.com>, <sunocoshellchevrongas.com>, <shellandchevronrewards.com>, <shellandchevroncoupondepot.com>, <getyourgasonchevron.com>, <gasgiftcardsforchevron.com>, <fuelrewardsprogramchevron.com>, <fuelrewardsforchevron.com>, <exxonchevronrewards.com>, <couponvouchersforchevron.com>, <couponsforchevronusa.com>, <chevronvoucherscodesusa.com>, <chevronrewardsusa.com>, <chevronrewardscenter.com>, <chevrongiftcardsdepot.com>, and <chevrongasgiftcardsnation.com> domain names be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: November 14, 2014
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