Chevron Intellectual Property LLC v. WEB MASTER INTERNET SERVICES PRIVATE LIMITED
Claim Number: FA1612001708412
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is WEB MASTER INTERNET SERVICES PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hr2chevron.com> and <texacochevroncard.com> registered with Tirupati Domains and Hosting Pvt Ltd.
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 December 19, 2016; the Forum received payment on December 19, 2016.
On December 21, 2016, Tirupati Domains and Hosting Pvt Ltd. confirmed by e-mail to the Forum that the <hr2chevron.com> and <texacochevroncard.com> domain names are registered with Tirupati Domains and Hosting Pvt Ltd. and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Pvt Ltd. has verified that Respondent is bound by the Tirupati Domains and Hosting Pvt 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 December 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2017 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@hr2chevron.com, postmaster@texacochevroncard.com. Also on December 27, 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 January 26, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink 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 registered CHEVRON with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 0,364,683, registered Aug. 23, 1937), which demonstrates its rights in the mark. Additionally, Complainant has registered the TEXACO mark with the USPTO (e.g., Reg. No. 57,902, registered Dec. 4, 1906), which demonstrates its rights in the mark. The <hr2chevron.com> domain name is confusingly similar to the CHEVRON mark, as the disputed domain name simply adds the abbreviation “hr,” the number “2”, along with the generic top-level domain (“gTLD”) “.com.” Similarly, the <texacochevroncard.com> disputed domain is confusingly similar to the CHEVRON and TEXACO mark, as the disputed domain name combines the two marks, adds the generic term “card” and the gTLD “.com.”
Respondent is not commonly known by the disputed domain names based on the available WHOIS information. Respondent’s use of the disputed domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to host commercial click-through links to either retirement and benefits options or credit card services.
Respondent has registered and is using the disputed domain names in bad faith. First, Respondent uses the disputed domain names to disrupt Complainant’s business in that Respondent uses the disputed domain names to deter Internet users searching for Complainant’s website, which is disruptive to Complainant’s business. Further, Respondent uses the disputed domain names to confuse and divert Internet users to its own websites, which hosts click-through links, through which Respondent obtains commercial gain. Finally, due to the strong popularity of Complainant and its marks, Respondent must have had actual knowledge of Complainant’s marks when registering the disputed domain names.
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 <<hr2chevron.com> and <texacochevroncard.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 uses the CHEVRON and TEXACO marks in connection with its business as one of the world’s leading integrated energy companies. Complainant registered the CHEVRON mark with the USPTO (e.g., Reg. No. 0,364,683, registered Aug. 23, 1937). Complainant also registered the TEXACO mark with the USPTO (e.g., Reg. No. 57,902, registered Dec. 4, 1906). Complainant argues that such registrations provide rights in the CHEVRON and TEXACO marks. Generally, panels have agreed with this argument. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel also agrees with this argument and finds that Complainant has rights in the CHEVRON and TEXACO marks pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <hr2chevron.com> and <texacochevroncard.com> domain names are confusingly similar to Complainant’s CHEVRON and TEXACO marks, because Respondent has simply added the “hr” abbreviation and the number “2” to the <hr2chevron.com> disputed domain name and the generic term “card” to the <texacochevroncard.com> domain name. Additionally, Complainant notes that both disputed domain names add the gTLD “.com.” Complainant argues, and previous panels have agreed, that such changes do not remove the disputed domain names from the realm of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel agrees with Complainant’s arguments, and finds that the <hr2chevron.com> and <texacochevroncard.com> disputed domain names are confusingly similar to Complainant’s CHEVRON and TEXACO marks according to Policy ¶ 4(a)(ii)
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 first contends that Respondent has not been commonly known by the disputed domain names based on WHOIS information. WHOIS information associated with the domain names indicates that Respondent registered the disputed domain names using the name “WEB MASTER INTERNET SERVICES PRIVATE LIMITED,” which does not appear to resemble the disputed domains. Additionally, Complainant notes that Respondent is neither licensed nor authorized to use the CHEVRON or TEXACO marks. Panels have held, and this Panel also holds, that a respondent may be considered not commonly known by a disputed domain name based on WHOIS information and a lack of other evidence in the record to the contrary, even if the respondent used a privacy service to shield their identity. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”).
Complainant next asserts that Respondent’s use of the disputed domain names, to provide click through links to unrelated businesses, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent appears to use the disputed domain names to resolve to a website which displays a directory of links with titles such as, “Benefit Plan” and “Pension Retirement Plan.” Typically, panels have held that using a confusingly similar domain name to display click-through links to unrelated business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Accordingly, the Panel finds Respondent’s use of the disputed domain names does not adhere to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant has proved this element.
Finally, Complainant argues that Respondent has registered and is using the disputed domain names in bad faith. First, Complainant argues that Respondent uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii), because Respondent uses the disputed domain names to divert Internet users away from Complainant’s business to its own website, which hosts click-through links that may compete with Complainant’s business. Generally, panels have held that disruptive behavior to a Complainant’s business qualifies as bad faith under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum January 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent uses the disputed domain names to divert Internet users to its own websites that host competitive links and also finds that Respondent is acting in bad faith under Policy ¶ 4(b)(iii).
Next, Complainant also argues that Respondent is acting in bad faith under Policy ¶ 4(b)(iv), because Respondent intentionally diverts Internet users to its own website for its own commercial gain. Complainant argues that Respondent does this by hosting websites that feature click-through links, through which Respondent derives commercial gain. Many panels have agreed with such an argument. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As such, the Panel finds that Respondent is acting in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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 <hr2chevron.com> and <texacochevroncard.com> domain names be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 7, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page