Chevron Intellectual Property LLC v. Rhyne George / GeorgeRhyne
Claim Number: FA1512001652820
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, Washington D.C., United States. Respondent is Rhyne George / GeorgeRhyne (“Respondent”), North Carolina, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <havolinediamond4u.com> and <havolinediamondfinishcarwash.com>, registered with Register.com, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2015; the Forum received payment on December 17, 2015.
On December 17, 2015, Register.com, Inc. confirmed by e-mail to the Forum that the <havolinediamond4u.com> and <havolinediamondfinishcarwash.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 December 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2016 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@havolinediamond4u.com, postmaster@havolinediamondfinishcarwash.com. Also on December 18, 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 January 14, 2016, 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 names be transferred from Respondent to Complainant.
Complainant
Complainant is one of the world’s leading integrated energy companies with a global workforce of over 55,000 company employees and 3,500 service station employees. Complainant is active in all facets of the global energy industry, including research, exploration, production, and transportation of crude oil and natural gas. Complainant has registered the HAVOLINE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 61,806, registered April 9, 1907), which demonstrates Complainant’s rights in its mark. The <havolinediamond4u.com> and <havolinediamondfinishcarwash.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “diamond,” “finish,” “carwash,” and “4u” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Respondent is not licensed or authorized to use Complainant’s mark. Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use of the domain names. Rather, Respondent uses its <havolinediamond4u.com> domain name to falsely claim an ongoing supply and relationship with Complainant. Respondent fails to make any active use of its <havolinediamondfinishcarwash.com> domain name.
Respondent has registered and is using the disputed domain names in bad faith. Respondent uses the <havolinediamond4u.com> domain name in an attempt to disrupt and compete with Complainant’s business. Respondent’s use of the <havolinediamond4u.com> domain name causes Internet users to think they are accessing a website associated with Complainant and attracts Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark. Respondent has failed to make any active use of the <havolinediamondfinishcarwash.com> domain name. Respondent registered the disputed domain names with actual knowledge of Complainant’s mark.
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 <havolinediamond4u.com> and <havolinediamondfinishcarwash.com> domain names.
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(f), 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 is one of the world’s leading integrated energy companies with a global workforce of over 55,000 company employees and 3,500 service station employees. Complainant is active in the global energy industry, including research, exploration, production, and transportation of crude oil and natural gas. Complainant has registered the HAVOLINE mark with the USPTO (e.g., Reg. No. 61,806, registered April 9, 1907). The Panel finds that Complainant’s trademark registration with the USPTO is sufficient to demonstrate its rights in the mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has demonstrated its rights in the HAVOLINE mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <havolinediamond4u.com> and <havolinediamondfinishcarwash.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add descriptive terms such as “diamond,” “finish,” “carwash,” and “4u” and the gTLD “.com.” Previous panels have held that the addition of descriptive terms and/or the gTLD “.com” to a complainant’s mark do not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). 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). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark 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 names 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 argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Complainant states that, while Respondent was formerly supplied with Complainant’s products, Respondent has no current license or authorization to use Complainant’s mark because the supply agreement was terminated long ago. The WHOIS information merely lists “Rhyne George / GeorgeRhyne” as registrant and Respondent has not provided any evidence for the Panel’s consideration. Therefore the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses its <havolinediamond4u.com> domain name to falsely claim an ongoing supply and relationship with Complainant. Additionally, Complainant argues that Respondent fails to make any active use of its <havolinediamondfinishcarwash.com> domain name. Past panels have found that a respondent’s use of a disputed domain name to sell products and services that are in competition with the complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Past panels have also held that there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent fails to make an active use of a domain. 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). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with 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).
Complainant has proved this element.
Complainant argues that Respondent uses the <havolinediamond4u.com> domain name in an attempt to disrupt and compete with Complainant’s business. Past panels have found evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent appropriates a complainant’s mark to divert the complainant’s customers to the respondent’s competing business. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website). Therefore the Panel finds that Respondent has engaged in bad faith registration and use of the domain names under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is using the <havolinediamond4u.com> domain name to attract Internet users to Respondent’s website, for Respondent’s commercial gain, by creating a likelihood of confusion with Complainant’s mark. Past panels have found that a respondent’s use of a domain name to host a website that offers products and services that were similar to those offered by a complainant under its mark constitutes bad faith registration and use per Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent has failed to make any active use of the <havolinediamondfinishcarwash.com> domain name. Complainant has not presented any evidence to support its contention that the <havolinediamondfinishcarwash.com> domain name does not resolve to an active website, however, Respondent has not submitted any evidence to refute this allegation. Past panels have agreed that a respondent’s failure to make an active use of a domain constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). The Panel finds Complainant’s uncontested allegation establishes that Respondent registered and is using the disputed domain names in violation of Policy ¶ 4(a)(iii).
Complainant asserts that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark. Complainant argues that the fact that Respondent registered the domains and then used one to resolve to its own website strongly suggests that Respondent had actual knowledge of Complainant’s mark at the time the domains were registered. Past panels have concluded that a respondent registered a disputed domain name in bad faith under Policy ¶ 4(a)(iii) where it was clear that the respondent was well-aware of the complainant’s mark at the time the disputed domain was registered. See 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). As such, the Panel finds that Respondent registered the domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <havolinediamond4u.com> and <havolinediamondfinishcarwash.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 18, 2016
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