Chevron Intellectual Property LLC v. Jack Brooks
Claim Number: FA1509001635967
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Jack Brooks (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-corps.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on September 1, 2015; the Forum received payment on September 1, 2015.
On September 1, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chevron-corps.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@chevron-corps.com. Also on September 3, 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 October 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant is the parent company of Chevron Corporation, which has registered the CHEVRON trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 364,683, registered Feb. 14, 1939). The mark is used on or in connection with goods or services produced in the global energy industry, including research, exploration, production and transportation of crude oil and natural gas; refining, marketing and distribution of transportation fuels and lubricants; manufacturing and sale of petrochemical products; generation of power and production of geothermal energy; providing energy efficiency solutions; and development of future energy resources, including research for advanced biofuels. The <chevron-corps.com> domain name is confusingly similar to the CHEVRON trademark because the domain name contains the entire mark and adds the generic top-level domain (“gTLD”) “.com” along with a hyphen and the generic term “corps.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is using the domain name to send fraudulent emails whereby Respondent purports to be Complainant, which is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent’s use of the domain name disrupts Complainant’s business. Respondent is also attempting to commercially profit from a likelihood of confusion. Respondent had actual knowledge of Complainant’s trademark rights.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <chevron-corps.com> domain name.
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 states that it is the parent company of Chevron Corporation, which has registered the CHEVRON trademark with the USPTO (e.g., Reg. No. 364,683, registered Feb. 14, 1939). The mark is used in connection with goods or services produced in the global energy industry. The Panel finds that Complainant’s registration with the USPTO is sufficient to establish its rights in the CHEVRON mark according to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant claims that the <chevron-corps.com> domain name is confusingly similar to the CHEVRON mark. The domain name contains the entire mark and adds the gTLD “.com” along with a hyphen and the generic term “corps.” Panels have found that the additions of the gTLD “.com” and punctuation-related alterations (such as adding a hyphen) are insufficient to distinguish a disputed domain name from a registered mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). Past panels have also found a confusing similarity where the domain name contained the entire mark and added a generic term. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Therefore, the Panel finds that the <chevron-corps.com> domain name is confusingly similar to the CHEVRON trademark under Policy ¶ 4(a)(i).
Complainant has proved 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 Respondent is not commonly known by the <chevron-corps.com> domain name, nor is Respondent in possession of licensing rights that would allow it to use the CHEVRON mark in domain names. The WHOIS record lists “Jack Brooks” as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known by the disputed domain name or in possession of licensing rights. The Panel therefore concludes that Respondent does not have rights or legitimate interests in the domain name under 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 argues that the Respondent is not using the <chevron-corps.com> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant claims that Respondent is using the domain name in connection with a fraudulent email scheme. Complainant claims that Respondent has created an email address using the disputed domain name as the suffix, Respondent has posed as Complainant by sending emails to Complainant’s vendors requesting bids for equipment, Respondent has also sent an email—in which it purports to be Complainant—that solicits a false purchase order, Respondent uses a signature block on these emails that contains the business title of Complainant’s parent company as well as the name “Jack Brooks” and the job title “Director of Purchasing”. Past panels have used such conduct as a basis to deny a respondent rights under Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014) (finding 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 defraud the suppliers). The Panel accepts Complainant’s allegations regarding Respondent’s use of the domain name, and finds that Respondent does not have rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant argues that the aforementioned fraudulent email scheme causes disruption. While panels have found bad faith under Policy ¶ 4(b)(iii) only where the respondent’s use competes with the complainant in some manner (see Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”), other panels have adopted a more expansive definition of “competition.” In Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000), the panel, in finding bad faith, stated simply that a competitor is “one who acts in opposition to another.” The Panel agrees with Complainant’s argument that Respondent’s use of the domain name is in opposition to Complainant, and therefore finds bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that its trademark registrations for the CHEVRON mark existed well before the registration of the disputed domain name. Complainant argues that Respondent had actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent had actual knowledge of the mark and Complainant's rights, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proved 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-corps.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: October 6, 2015
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