Phillips 66 Company v. Nora Landman / Nora Enterprises
Claim Number: FA1902001830044
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Nora Landman / Nora Enterprises (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seventysixgasstation.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interest in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2019; the Forum received payment on February 15, 2019.
On February 18, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <seventysixgasstation.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@seventysixgasstation.com. Also on February 19, 2019, 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 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in the worldwide manufacture, marketing, distribution, and sale of petroleum products and services.
Complainant holds a registration for the service 76 mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,176,768, registered November 28, 2006.
Respondent registered the domain name <seventysixgasstation.com> on January 6, 2019.
The domain name is confusingly similar to Complainant’s 76 mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise permitted to use Complainant’s 76 mark.
Respondent does not use the domain name for a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, Respondent uses the domain name to pass off as Complainant online on a resolving webpage.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the 76 mark prior to registering the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the 76 service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for a mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <seventysixgasstation.com> domain name is confusingly similar to Complainant’s 76 service mark. The domain name contains the mark in its entirety, with only a conversion of the mark from numeric form to its verbal form, plus the addition of the generic expression “gas station,” which relates to Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, J.P. Commc’ns, Inc. v Mainstream Adver., FA 1270452 (Forum July 11, 2009) (concluding that a respondent’s substitution of the number “10” for the word “ten” in a UDRP complainant’s TOP TEN WHOLESALE mark in creating the <top10wholesale.com> domain name did not distinguish the domain name from that mark due to their phonetic similarity).
See also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018):
Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.
Further see Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017):
[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.
This is because every domain name requires a gTLD.
Under Policy 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <seventysixgasstation.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <seventysixgasstation.com> domain name, and that Complainant has not licensed or otherwise permitted Respondent to use the 76 mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Nora Landman / Nora Enterprises,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <seventysixgasstation.com> domain name to pass itself off as Complainant online in an attempt to attract Internet users to a website fabricated to resemble Complainant’s official website, likely as part of a phishing scheme through which Respondent intends to solicit the personal information of Internet users wishing to do business with Complainant, and that Respondent does this for financial gain. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018):
The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the challenged <seventysixgasstation.com> domain name, for its illicit commercial gain, to attract unsuspecting Internet users to the website resolving from the domain name, likely as part of a “phishing” scheme. Under Policy ¶ 4(b)(iv), this use of the domain name illustrates Respondent’s bad faith in registering and using the domain name. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum August 6, 2018) (finding that a respondent registered and used a domain name in bad faith within the meaning of Policy ¶ 4(b)(iv) where that respondent used a domain name that was confusingly similar to the mark of a UDRP complainant in order to profit illicitly by presenting Internet users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” as that of the complainant’s legitimate website and used the site to gain access to users’ cryptocurrency accounts).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the 76 mark while registering the <seventysixgasstation.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, Google Inc. v. Ahmed Humood, FA1591796 (Forum January 7, 2015):
This Panel makes that inference; Respondent had actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s … mark and Respondent’s use of one of the disputed domain names to retail Internet domain name registration and maintenance services related to and in competition with Complainant.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <seventysixgasstation.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 20, 2019
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