Exxon Mobil Corporation v. Zhichao Yang
Claim Number: FA1611001702730
Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <exxonsmartcard.com> and <mobilsmartcard.com>, registered with NameSilo, 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 November 14, 2016; the Forum received payment on November 14, 2016.
On November 14, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <exxonsmartcard.com> and <mobilsmartcard.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 November 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@exxonsmartcard.com, and postmaster@mobilsmartcard.com. Also on November 15, 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 December 7, 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.
A. Complainant
Complainant has United States Patent and Trademark Office (“USPTO”) registrations for both its EXXON mark (e.g., Reg. No. 884,420, registered Jan. 20, 1970) and the MOBIL mark (e.g., Reg. No. 363,312, registered Dec. 20, 1938), and has rights for both marks under Policy ¶ 4(a)(i). Respondent’s <exxonsmartcard.com> domain name is confusingly similar to Complainant’s EXXON mark, and that Respondent’s <mobilsmartcard.com> domain name is confusingly similar to its MOBIL mark. Both domain names merely add the term “smartcard,” which is descriptive of Complainant’s credit card business, and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in either the <exxonsmartcard.com> or <mobilsmartcard.com> domain names. Complainant has not licensed or otherwise permitted Respondent to use its EXXON or MOBIL marks in any fashion, and Respondent is not commonly known by either of the disputed domain names. Respondent is using the disputed domain names to host third-party links that directly compete with Complainant’s gas rewards credit card business. Such use cannot be construed as a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent has registered and is using both the <exxonsmartcard.com> and <mobilsmartcard.com> domain names in bad faith. There has been a pattern of numerous UDRP proceedings held against Respondent where it was forced to transfer other domains featuring world-famous marks. Respondent is attempting to commercially gain by diverting Internet users away from Complainant’s business to a pay-per-click hyperlink to a competitor. Further, Respondent intended to disrupt Complainant’s business when it registered the domain names, and it surely had actual notice of Complainant’s rights in both the EXXON and MOBIL marks.
B. Respondent
Respondent failed to 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 <exxonsmartcard.com> and <mobilsmartcard.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 (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 claims that it has USPTO registrations for both its EXXON mark (e.g., Reg. No. 884,420, registered Jan. 20, 1970) and the MOBIL mark (e.g., Reg. No. 363,312, registered Dec. 20, 1938), and that it has rights for both marks under Policy ¶ 4(a)(i). Panels have found that USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country where the respondent is operating. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in both the EXXON and MOBIL marks under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <exxonsmartcard.com> domain name is confusingly similar to its EXXON mark, and that Respondent’s <mobilsmartcard.com> domain name is confusingly similar to its MOBIL mark. Complainant argues that Respondent has merely added a gTLD and the term “smartcard” to Complainant’s entire EXXON and MOBIL marks. Prior panels have found that a disputed domain name is confusingly similar to a complainant’s mark when the domain name features a term that is descriptive of the complainant’s business. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Here, Complainant posits that it offers a Smart Card as a consumer credit card that provides a smarter and more convenient way to save. Therefore, the Panel holds that Respondent’s <exxonsmartcard.com> and <mobilsmartcard.com> domain names are confusingly similar to the EXXON and MOBIL marks, respectively, because they couple the marks with a term that is descriptive of Complainant’s offerings.
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 (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 (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 contends that Respondent has no rights or legitimate interests in the <exxonsmartcard.com> or <mobilsmartcard.com> domain names. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its EXXON or MOBIL marks in any fashion, and that Respondent is not commonly known by either of the disputed domain names. The WHOIS information for both domain names is identical and lists “Zhichao Yang” as the registrant. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by either the <exxonsmartcard.com> or <mobilsmartcard.com> domain names.
Complainant further contends that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using <exxonsmartcard.com> and <mobilsmartcard.com> to redirect Internet users to third-party hyperlinks from which Respondent receives pay-per-click revenue. Panels have consistently held that a respondent does not have rights or legitimate interests in a confusingly similar domain name where they host links that compete with the complainant. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant’s screen shots of Respondent’s domain names include links to a “Mobil Gas Card,” “Exxon Gas Credit Card,” and “Exxonmobil Credit Card.” Accordingly, the Panel holds that Respondent’s use of the disputed domain names is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent has registered both the <exxonsmartcard.com> and <mobilsmartcard.com> domain names in bad faith. First, Complainant argues that Respondent has had numerous UDRP proceedings decided against it, and that Respondent’s behavior establishes a pattern of bad faith under Policy ¶ 4(b)(ii). Complainant citesseveral UDRP decisions where it contends that Respondent has been ordered to transfer a domain name for committing bad faith. See, e.g., State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA1607001683240 (Forum Aug. 22, 2016); see also Capital One Financial Corp. v. Zhichao Yang, FA1511001647371 (Forum Dec. 21, 2015); see also Capital One Financial Corp. v. Zhichao Yang, FA1410001583407 (Forum Nov. 10, 2014). Panels have held that multiple UDRP decisions against a Respondent can show a pattern bad faith. See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). As such, the Panel holds that Respondent has engaged in a pattern of bad faith domain name registrations under Policy ¶ 4(b)(ii).
Complainant additionally argues that Respondent has registered both the <exxonsmartcard.com> and <mobilsmartcard.com> domain names for the purpose of disrupting Complainant’s business. Complainant argues that Respondent is using the domain names to divert Internet users looking for Complainant’s credit card it offers under the EXXON and MOBIL marks to competing hyperlinks. As referenced above, Complainant has submitted screen captures for both domain names showing that Respondent is hosting hyperlinks that directly compete with Complainant’s business. The Panel holds that Respondent’s use of the disputed domains is in bad faith under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”).
Complainant next argues that Respondent’s use of the <exxonsmartcard.com> and <mobilsmartcard.com> domain names amounts to a bad faith attempt to commercially gain by creating confusion with Complainant’s EXXON and MOBIL marks. Complainant presumes that Respondent is receiving pay-per-click revenue when Internet users click on one of the “Related Links” on the resolving websites of the disputed domains. Panels have held that a respondent hosting hyperlinks that compete with the complainant can be an attempt to create confusion as to the source, sponsorship, affiliation, or endorsement of the domain name under Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Therefore, the Panel holds that Respondent’s registration and use of the <exxonsmartcard.com> and <mobilsmartcard.com> domain names was in bad faith.
Complainant further contends that Respondent had actual notice of its rights in the EXXON and MOBIL marks when it registered the <exxonsmartcard.com> and <mobilsmartcard.com> domain names, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the worldwide fame that the EXXON and MOBIL marks have achieved as evidence that Respondent had actual notice of its rights in the marks. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel may infer actual notice from the fame of Complainant’s marks. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant additionally argues that the Respondent’s hosting of competing links also leads to the inference that it had actual notice of Complaint’s marks. Panels have also used this as evidence to infer bad faith under Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the EXXON and MOBIL marks when it registered both disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonsmartcard.com> and <mobilsmartcard.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: December 14, 2016
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