Phillips 66 Company v. Jon Hopkins
Claim Number: FA1602001662572
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Jon Hopkins (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philips66.co>, registered with Tucows Domains Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2016; the Forum received payment on February 24, 2016.
On February 25, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <philips66.co> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 25, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@philips66.co. Also on February 25, 2016, 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the PHILLIPS 66 mark through registration of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 255,501, registered April 23, 1929).
Respondent’s disputed domain name, <philips66.co>, is confusingly similar to Complainant’s PHILLIPS 66 mark because the domain differs only through the removal of a space between the two words of the mark, the removal of the letter “L” in the mark, and the addition of the country code top-level domain (“ccTLD) “.co.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor licensed or in any manner permitted to use Complainant’s PHILLIPS 66 mark. Respondent is currently using the disputed domain name to redirect Internet users to Complainant’s official site. Respondent’s is engaging in typosquatting. Respondent’s disputed domain name takes advantage of a common typing error Internet users make while searching for Complainant’s site. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is typosquatting in bad faith. Finally, it is clear from Respondent’s use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the PHILLIPS 66 mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, the nominal Respondent asserts in several emails to the dispute resolution provider that he did not register the <philips66.co> domain name and has taken reasonable measure to have the registration record corrected.
Complainant has rights in the PHILLIPS 66 mark through its registration of such mark with the USPTO and otherwise.
The nominal Respondent does not appear to be the actual registrant of the at-issue domain name.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
The at-issue domain name was registered after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to direct visitors to Complainant’s official website.
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 formal 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.”). The Panel will also consider Respondent’s email communication to the dispute resolution provider.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the PHILLIPS 66 mark with multiple trademark authorities including the USPTO is more than sufficient to establish its rights in a mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <philips66.co> domain name contains Complainant’s entire PHILLIPS 66 trademark less an “l” and less its space, with the country code top-level domain name “.co” appended to the resulting string. The removal of the “l” and space between the terms in Complainant mark and the addition of the country code top level domain name do not distinguish the at-issue domain name from the Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that at-issue domain name is confusingly similar to Complainant’s PHILLIPS 66 mark pursuant to Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Where there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
Respondent asserts via email to the dispute resolution provider that the <philips66.co> domain name was registered by a third party who used Respondent’s name and address on the registration without his permission. Respondent also suggests via email that he has taken measures to attempt to correct the registrar’s record and has reported the fraud to legal authorities. If the nominal Respondent did not register the domain name then it is axiomatic that he has no rights or interest in the domain name under Policy ¶ 4(a)(i). See General Steel Domestic Sales, LLC d/b/a General Steel Corporation and Anthem Steel Corp., LLC d/b/a Anthem Steel Corporation v. Rodney Chamness, Esq. / ICON Domains, LLC, FA1636155 (Nat. Arb. Forum Oct. 15, 2015) (finding that a respondent who claims his identity was stolen to register an at-issue domain name has no rights to such domain name).
Next, WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Jon Hopkins” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of 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).
Additionally, Respondent uses the at-issue domain name to redirect visitors to Complainant’s official website. By using the domain name for such purpose, Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances, which compel the Panel to conclude that the domain name was registered and used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above the confusingly similar domain name is used to direct visitors to Complainant’s official website. Naturally, it is a small matter to later redirect the domain name to a website controlled by the domain name’s registrant so that such party might take advantage of the confusion between the at-issue domain name and Complainant’s trademark. Such use of a domain name is disruptive to Complainant’s business and demonstrates bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use).
Furthermore, the <philips66.co> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark, or that such users will otherwise confuse the misspelled trademark laden domain name with a targeted trademark. As discussed above regarding Policy ¶ 4(a)(i), the domain name registrant simply deletes a single character and a space from Complainant’s trademark to form the second level of the <philips66.co> domain name. While currently the domain name’s registrant links the confusingly similar domain name to Complainant’s official website, later the domain name may easily be redirected to a website where the confusion between the domain name and Complainant’s PHILLIPS 66 trademark may be exploited to the detriment of Complainant. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, the <philips66.co> domain name was registered knowing that Complainant has trademark rights in PHILLIPS 66. The domain name’s registrant’s prior knowledge is evident from the notoriety of Complainant’s trademark and from the use of the domain name to direct visitors to Complainant’s official website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <philips66.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 22, 2016
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