Chevron Intellectual Property LLC v. Richard Bailey / Jacobs
Claim Number: FA1411001588430
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Richard Bailey / Jacobs (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-corporation.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 4, 2014; the National Arbitration Forum received payment on November 4, 2014.
On November 6, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <chevron-corporation.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@chevron-corporation.com. Also on November 6, 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 December 8, 2014, 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 name be transferred from Respondent to Complainant.
Complainant
Complainant uses the CHEVRON mark in connection with the global energy industry. Complainant has rights in CHEVRON mark for purposes of Policy ¶ 4(a)(i) as demonstrated by Complainant’s trademark registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 364,683, registered Feb. 14, 1939). The <chevron-corporation.com> domain name is confusingly similar to the CHEVRON mark as the name merely adds the business term “corporation” to the mark, separated by a hyphen, and the generic top-level domain (“gTLD”) “.com.”
The disputed domain name does not resolve to a website. Respondent uses the e-mail address associated with the <chevron-corporation.com> domain name as part of a fraudulent scheme to send unauthorized e-mail solicitations to third parties. Specifically, Respondent impersonates an employee of Complainant, to request product quotes from third-party businesses in an attempt to solicit business and information from these businesses under false pretenses. Such attempts by Respondent to pass itself of as Complainant demonstrates no bona fide offering or legitimate use of the domain name. Respondent has no relationship with Complainant. The WHOIS record lists “Richard Bailey” as registrant, showing Complainant is not commonly known by the disputed domain name.
Respondent has engaged in both bad faith use and registration. Respondent’s use of the disputed domain name and associated e-mail string to solicit business from third parties disrupts Complainant’s business. Further, by passing itself off as Complainant, Respondent is attempting to solicit business and/or generate commercial gain through an ostensible association with Complainant. In addition, Respondent’s efforts to impersonate Complainant indicate Respondent had actual knowledge of Complainant at the time of domain name registration.
Respondent
Respondent did not submit a Response in this proceeding.
For the 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 uses the CHEVRON mark in connection with the global energy industry. Complainant claims rights in CHEVRON mark for purposes of Policy ¶ 4(a)(i) as demonstrated by its trademark registration with the USPTO (e.g., Reg. No. 364,683, registered Feb. 14, 1939). The Panel determines that Complainant’s USPTO registration evinces Complainant’s Policy ¶ 4(a)(i) rights in the CHEVRON mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that the <chevron-corporation.com> domain name is confusingly similar to the CHEVRON mark as the name merely adds the business term “corporation” to the mark, separated by a hyphen, plus the gTLD “.com.” Past panels have found that the additions of a hyphen and gTLD serve no distinctive value in the confusing similarity analysis. See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). Further, panels have found confusing similarity where the domain name includes the subject mark plus a generic term, especially where the term contains some relation to complainant. See, e.g., Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Accordingly, the Panel agrees that the additions of a hyphen, gTLD, and generic business term “corporation,” fail to distinguish the resulting domain name from the mark, and therefore finds the <chevron-corporation.com> domain name confusingly similar to the CHEVRON 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 asserts that the WHOIS record lists “Richard Bailey” as registrant, indicating Complainant is not commonly known by the disputed domain name. Complainant further claims that it shares no affiliation with Respondent. The Panel agrees that the available evidence indicates 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 claims that the disputed domain name does not resolve to a website, but that Respondent uses the e-mail address associated with the <chevron-corporation.com> domain name as part of a fraudulent scheme to send unauthorized e-mail solicitations to third parties. Specifically, Complainant claims that Respondent impersonates an employee of Complainant to request product quotes from third-party businesses in an attempt to solicit business and information from these businesses. Complainant argues that such attempts by Respondent to pass itself of as Complainant demonstrate no bona fide offering or legitimate use of the domain name. In Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014), the panel found that the respondent lacked rights and legitimate interests in the disputed domain name where the respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate the complainant and allegedly defraud the suppliers. The Panel agrees that Respondent’s use of the disputed domain name in furtherance of fraudulent activity under the misleading guise of the <chevron-corporation.com> domain name and associated e-mail address amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant has proven this element.
Complainant argues that Respondent’s use of the disputed domain name and associated e-mail string to solicit business from third parties disrupts Complainant’s business. Past panels have determined that Policy ¶ 4(b)(iii) requires some degree of competition with respect to the complainant’s own offering. See, e.g., Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel accepts that Respondent’s conduct in impersonating Complainant in furtherance of fraud encompasses the requisite element of competition envisioned by Policy ¶ 4(b)(iii), and finds this is evidence of Respondent’s bad faith use and registration.
Complainant also argues that, by passing itself off as Complainant, Respondent is attempting to generate commercial gain or solicit business through an ostensible association with Complainant. Past panels have found evidence of bad faith under Policy ¶ 4(a)(iii) where the respondent relies on the disputed domain name to pass itself off as the Complainant, especially when the false impression is tied to fraudulent activity. For example, the panel in National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014), wrote, “We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.” See also Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel agrees that Respondent’s impersonation of Complainant through the e-mail associated with the <chevron-corporation.com> domain name to request product quotes from third-party businesses in an attempt to solicit business and information from these businesses amounts to bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s efforts to impersonate Complainant indicate Respondent had actual knowledge of Complainant at the time of domain name registration. The Panel agrees that Respondent’s behavior of sending e-mails impersonating Complainant demonstrates that Respondent registered the <chevron-corporation.com> domain name with Complainant in mind. Accordingly, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
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 <chevron-corporation.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 9, 2014
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