Exxon Mobil Corporation v. Yu JianBo / Yu JianBo
Claim Number: FA1705001733655
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, U.S.A. Respondent is Yu JianBo / Yu JianBo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sdexxon.com>, registered with Shanghai Meicheng Technology Information Development Co., 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2017; the Forum received payment on May 30, 2017.
On June 14, 2017, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <sdexxon.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., 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 June 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@sdexxon.com. Also on June 5, 2017, 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 June 28, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest publicly traded international oil and gas company and has registered the EXXON mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business (Reg. No. 884,420, registered Jan. 20, 1970). Respondent’s <sdexxon.com> domain name is confusingly similar to Complainant’s EXXON mark because the domain name incorporates the mark in its entirety and merely adds the letters “sd” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <sdexxon.com> domain name. Respondent is not commonly known by the disputed domain name, and Respondent is not affiliated with Complainant in any way. Complainant does not license Respondent to use the EXXON mark, nor is Respondent an authorized vendor, supplier, or distributor of Complainant’s goods and services. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a page that states “Service Unavailable.” Furthermore, the only reason that Respondent would use Complainant’s mark in the disputed domain name would be to trade on Complainant’s goodwill and mislead the public.
Respondent registered and uses the <sdexxon.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the EXXON mark, which can be inferred from the notoriety of Complainant’s mark and associated business. Furthermore, the fact that the disputed domain name is inactive corroborates a finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Exxon Mobil Corporation, of Spring, TX, USA. Complainant is the owner of domestic and international registrations for the mark EXXON, which it has continuously used since at least as early as 1970, in connection with its provision of goods and services in virtually every aspect of the oil, gas, petrochemical, and energy industry.
Respondent is Yu JianBo / Yu JianBo, of Hunan, China. Respondent’s registrar’s address is listed as Shanghai, China. The Panel notes that the <sdexxon.com> domain name was registered on or about January 1, 2017.
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 asserts that it has established rights in the EXXON mark via its registration of that mark with the USPTO. (Reg. No. 884,420, registered Jan. 20, 1970). Registration of a mark with the USPTO sufficiently establishes rights in that mark. 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 here finds that Complainant has established rights in the EXXON mark.
Complainant also argues that Respondent’s <sdexxon.com> domain name is confusingly similar to Complainant’s EXXON mark because the domain name incorporates the mark in its entirety and merely adds the letters “sd” and the gTLD “.com.” The addition of letters and a gTLD to a mark is not sufficient to eliminate confusing similarity. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel here finds that Respondent has not changed Complainant’s EXXON mark sufficiently to avoid a finding of confusingly similar for the purposes of Policy ¶ 4(a)(i).
Respondent raises 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), 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). Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its EXXON mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether said respondent is commonly known by the disputed domain name. 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). The WHOIS information on record lists “Yu JianBo / Yu JianBo” as the registrant. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the EXXON mark can further support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. 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 <sdexxon.com> domain name.
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is misleading the public to an inactive website by trading on Complainant’s goodwill. A general intent to mislead by using a confusingly similar domain name that resolves to an inactive website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”). Respondent’s <sdexxon.com> domain name resolves to a website displaying a “Service Unavailable” message. The Panel here finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that fit within the bounds of Policy ¶ 4(b) elements, the Panel may consider Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Complainant insists that, due to the notoriety of its mark and associated business, Respondent had actual notice of Complainant’s rights and therefore has registered and is using the disputed domain name in bad faith. Actual knowledge of a complainants rights in a mark can evince bad faith registration. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Complainant provided a screenshot of information about its operations in China, presumably to demonstrate the extensive notoriety of Complainant’s mark and business in China, which is Respondent’s location. The Panel agrees that Complainant’s notoriety is sufficient to infer that Respondent had actual notice of Complainant’s rights in the EXXON mark, and thus finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant notes that Respondent is not actively using the disputed domain name. Failure to make an active use of a domain name supports a finding of bad faith. See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). The disputed domain name appears to resolve to a website displaying a “Service Unavailable” message. The Panel here finds that Respondent has registered and is using the disputed domain name in bad faith.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As 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 <sdexxon.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 12, 2017
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