Chevron Intellectual Property LLC v. Chevron AE
Claim Number: FA1612001708665
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Chevron AE (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevrondubai.com> and <chevron-uae.com>, registered with OnlineNIC, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 22, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <chevrondubai.com> and <chevron-uae.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 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@chevrondubai.com, postmaster@chevron-uae.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 National Arbitration Forum appointed Darryl C. Wilson, 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, Chevron Intellectual Property LLC, along with its parent company, Chevron Corporation, is a large multinational energy company. Complainant uses the CHEVRON mark in all aspects of its business and prominently displays the mark in advertising and promotional materials. Complainant has rights in the CHEVRON mark based on registration with the United States Patent and Trademark Office (“USPTO”) and other trademark agencies around the world (e.g., Reg. No. 364,683, registered Aug. 28, 1945). Respondent’s <chevrondubai.com> and <chevron-uae.com> are confusingly similar because they each contain the mark in its entirety, merely differing through the addition of the descriptive geographic terms “dubai” or “uae” and the generic top-level domain (“gTLD”) “.com.” Respondent’s <chevron-uae.com> also contains a hyphen.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <chevrondubai.com> or <chevron-uae.com>, nor has Complainant granted Respondent authorization, consent, or approval to use the CHEVRON mark. The Whois information of record lists Respondent as “Chevron AE,” but Complainant confirms the domain names are not owned or controlled by Complainant. The disputed domain names do not currently resolve to active webpages, but will likely be altered to resolve to a fraudulent version of Complainant’s website in order to continue the fraud associated with a previously transferred domain, <chevronae.com>. Respondent is currently using <chevrondubai.com> as part of a fraudulent scheme. This use, or non-use, of the disputed domain names amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain names in bad faith. Respondent is using the disputed domain names to disrupt the business of Complainant and attract Internet users by causing Internet users to think they are accessing a website sponsored by Complainant. Respondent also clearly had actual knowledge of Complainant’s rights in the CHEVRON mark when it registered the disputed domain names. Additionally, Respondent is using <chevrondubai.com> in connection with fraud. Such activity must be considered bad faith registration and use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Chevron Intellectual Property LLC of San Ramon, CA, USA. Complainant is the owner of more than 100 domestic and foreign registrations for the mark CHEVRON and variations thereof covering goods and services in more than a dozen international classes. Complainant’s earliest registrations date back to 1939 for petroleum products and services. Complainant is also the registered owner of numerous domain names including <chevron.com>.
Respondent is Chevron AE of Dubai, Arab Emirates. Respondent’s registrar’s address is indicated as Oakland, CA, USA. The Panel notes that <chevrondubai.com> was created on or about July 21, 2016, and <chevron-uae.com> was created on or about November 11, 2016.
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 rights in the CHEVRON mark based on registration of the mark with the USPTO (e.g., Reg. No. 364,683, registered Aug. 28, 1945). Past panels have held that registration of a mark with the USPTO establishes rights in that mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel here finds that Complainant’s registration of the CHEVRON mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims the disputed domain names are confusingly similar to Complainant’s CHEVRON mark. Both <chevrondubai.com> and <chevron-uae.com> contain the mark in its entirety, adding the descriptive geographic term “dubai,” or “uae,” respectively; and the gTLD “.com.” Addition of a geographic term and gTLD does not remove a disputed domain name from confusing similarity in a Policy ¶ 4(a)(i) analysis. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Reese v. Morgan, FA 917029 (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). Respondent’s <chevron-uae.com> also contains a hyphen between the mark and geographic term. Hyphens are inconsequential to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel here finds the disputed domain names confusingly similar to Complainant’s CHEVRON mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <chevrondubai.com> or <chevron-uae.com>. Complainant claims that Respondent has not been authorized to use the CHEVRON mark, nor has Respondent been commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Chevron AE,” possibly an abbreviation for “Chevron Arab Emirates,” a reference to Complainant’s business in the region. However, Complainant states it researched the domain names and confirmed that the names are not owned or controlled by Complainant. Prior panels have found respondent to not be commonly known by a domain name, despite being listed as such in WHOIS when there is not sufficient corroborative evidence in the record. See The Toronto-Dominion Bank v. RD BANK /-, FA1404001554468 (Forum May 13, 2014) (“WHOIS information for the <rdbank.com> domain name lists ‘RD BANK /-‘ as the domain name’s registrant. However, there is nothing in the record that corroborates the WHOIS data’s suggestion that Respondent may be commonly known by the <rdbank.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Previous panels have also held that respondents are not known by a disputed domain name when there is no evidence in the record to show the respondent has been authorized to register a domain name with a complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant next asserts Respondent’s lack of rights or legitimate interests in the domain names is evidenced by a failure to use the names for a bona fide offering of goods or services or legitimate noncommercial or fair use. Neither domain name resolves to an active page, and Complainant claims <chevrondubai.com> currently hosts an email address, <info@chevrondubai.com>, which is being used to impersonate Complainant and perpetrate a fake job scam. Failure to make active use of a disputed domain name is not evidence of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Additionally, use of a domain name to send emails purportedly on behalf of a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Respondent’s failure to make active use of the domain names beyond Respondent’s use of <chevrondubai.com> as an email suffix in furtherance of a fraudulent scheme is not a bona fide offering of goods or services, or legitimate noncommercial or fair use. The Panel here finds that Respondent has no rights or legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) & (iii)
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Respondent’s registration and use of <chevrondubai.com> and <chevron-uae.com> are in bad faith, as they are involved in a scheme to disrupt Complainant’s business by diverting Internet users. Use of a domain name in a manner which disrupts a complainant’s business is evidence of Policy ¶ 4(b)(iii) bad faith. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel again notes that <chevrondubai.com> is being used in connection with a fraudulent email scheme offering false jobs to prospective candidates. Complainant believes and asserts Respondent plans to use <chevron-uae.com> for the same purposes, as it shares the same registrant as <chevrondubai.com>, and also shares the same registrar as a previously transferred domain name, namely <chevronae.com>. See Chevron Intellectual Property LLC v. Chev Pet, FA1697405 (Forum Nov. 4, 2016).
Complainant points out, the registration of <chevrondubai.com> occurred immediately after <chevronae.com> was ordered to be transferred, and Respondent is listed as “Chevron AE” in the Whois information of record. It is possible to find a respondent’s bad faith based on potential future use. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). The Panel here finds that Respondent’s use of <chevrondubai.com> for a fraudulent email scheme disrupts Complainant’s business per Policy ¶ 4(b)(iii), and also finds that Respondent’s apparent intention to use <chevron-uae.com> amounts to bad faith per the Policy.
Complainant also contends Respondent’s registration and use of the disputed domain names suggest Respondent’s intention to attract Internet users by creating confusion as to affiliation or sponsorship by Complainant. Use of a domain name obviously connected with a famous mark for commercial gain can support a finding of Policy ¶ 4(b)(iv) bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel here finds Respondent’s registration and use of the disputed domain names evinces bad faith pursuant to Policy ¶¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chevrondubai.com> and <chevron-uae.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 9, 2017
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