Hess Corporation v. Mitsuko Abdi / hessoil
Claim Number: FA1503001612359
Complainant is Hess Corporation (“Complainant”), represented by Paul J. Reilly of Baker Botts L.L.P., New York, USA. Respondent is Mitsuko Abdi / hessoil (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hessoil.net>, registered with Melbourne IT Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2015; the Forum received payment on March 31, 2015.
On March 31, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <hessoil.net> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 April 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2015 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@hessoil.net. Also on April 2, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <hessoil.net> domain name is confusingly similar to Complainant’s HESS mark.
2. Respondent does not have any rights or legitimate interests in the <hessoil.net> domain name.
3. Respondent registered and uses the <hessoil.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns numerous versions of the HESS mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 832,393, registered July 25, 1967). Complainant uses the HESS mark in connection with its petroleum products, including oil, gas, and mineral exploration.
Respondent registered the <hessoil.net> domain name on August 8, 2011, and uses it to resolve to a website that is “under construction.”
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.”).
The Panel finds that Complainant’s registration of the HESS mark with the USPTO sufficiently demonstrates Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). 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.”).
Respondent’s <hessoil.net> domain name contains Complainant’s mark in full, adds the generic term “oil,” which refers to Complainant’s business, and attaches the gTLD “.net” to the domain name. Prior panels have found that adding a generic term does little to remove confusing similarity from a disputed mark, especially when the term describes Complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The addition of a gTLD also does not distinguish a disputed domain name from a complainant’s mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Thus, the Panel finds that the <hessoil.net> domain name is confusingly similar to Complainant’s HESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the disputed domain name. The WHOIS record for the <hessoil.net> domain name lists “Mitsuko Abdi / hessoil” as the registrant of record. However, Complainant has never granted Respondent permission to use the HESS mark or any variant thereof. Previous panels have found that a respondent is not commonly known by a disputed domain name, despite the WHOIS information, when there is no other evidence to suggest that a respondent is commonly known by that domain name. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). Accordingly, the Panel finds that Respondent lacks rights in the <hessoil.net> domain name.
Complainant asserts that Respondent’s lack of rights or legitimate interests in the disputed domain name is made further evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a website with no content, but merely a statement that “This site is under construction.” Complainant asserts that Respondent’s failure to use the domain name is not a bona fide offering of goods or services under The Panel agrees and finds that Respondent has failed to demonstrate a preparation to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore has not established rights or legitimate interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii).Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered a confusingly similar domain name to divert Internet users to its currently inactive page. Previous panels have found that respondents can engage in bad faith registration, even without having made an actual “use” of a disputed domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel agrees and finds bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent had actual and/or constructive knowledge of Complainant’s ownership of the HESS mark prior to registration of the disputed domain name. Complainant argues that in light of Complainant’s widespread use of the HESS mark for nearly a century, Respondent undoubtedly had actual knowledge of Complainant's mark and rights. Further, Complainant states that Respondent’s use of the famous HESS mark, in conjunction with the term “OIL,” a term associated with Complainant, supports a determination that Respondent was aware of Complainant’s ownership of the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant's mark and rights, which constitute 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").
Complainant also asserts that failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See 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). As Respondent has failed to make an active use of the disputed domain name for more than a year after registration, the Panel finds bad faith registration under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <hessoil.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 4, 2015
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