Chevron Intellectual Property LLC v. akaw wiu / James Edward
Claim Number: FA1902001830106
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, Washington DC, USA. Respondent is akaw wiu / James Edward (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevronoilae.com> and <chevronoiluae.com> (‘the Domain Names’) registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne 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, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the Domain Names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of them. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@chevronoilae.com and postmaster@chevronoiluae.com. Also on February 22, 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 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant owns the trademark CHEVRON registered, inter alia, in the USA for petroleum products and services since 1939. It owns chevron.com.
The Domain Names registered in 2018 have been used for web sites mimicking that of the Complainant (mentioning real projects of the Complainant’s and presenting them as the Respondent’s own) using the Complainant’s logo and another of its registered marks THE POWER OF HUMAN ENERGY and copying pages from an old version of the Complainant’s web site including copyright notices. The Respondent is using <chevronoiluae.com> as an e-mail address.
The Domain Names incorporate the Complainant’s famous CHEVRON mark in its entirety adding only the generic term ‘oil’, the geographical terms ‘uae’ or ‘ae’ and the gTLD .com which do not prevent any relevant confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and is not authorized by the Complainant. Passing off the web sites that are or have been attached to the Domain Names as those of the Complainant by using the Complainant’s logo and copying material from the Complainant’s site including material relating to the Complainant’s projects is not a bona fide offering of services or a legitimate noncommercial or fair use.
This use is registration and use in bad faith designed to disrupt the business of the Complainant by attracting Internet users for commercial gain to the Respondent’s web site. The use of the Complainant’s logo and material from the Complainant’s official site by the Respondent shows the Respondent has actual knowledge of the Complainant and its business. The Respondent has also provided false contact information on the WHO is database.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Respondent owns the trademark CHEVRON registered, inter alia, in the USA for petroleum products and services since 1939. It owns chevron.com.
The Domain Names registered in 2018 are or have been used to point to pages mimicking the Complainant’s official site using the Complainant’s logo and material copied from the Complainant’s site including copyright notices and referring to real projects of the Complainant presenting them as those of the Respondent.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, the Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Complainant has presented evidence that the named respondents are, in fact, one and the same or part of the same entity. Bearing in mind that the web sites associated with the Domain Names are visually identical and the name servers and the telephone contact details for the Domain Names are the same, the Panel agrees with the Complainant that the named respondents should be considered to be the same party for the purposes of these Proceedings and shall be referred to as the Respondent.
Identical or Confusingly Similar
The Domain Names consist of the Complainant’s CHEVRON mark (registered in the USA for petroleum products since 1939), the descriptive term ‘oil’, the geographical terms ‘uae’ or ‘ae’ referring to United Arab Emirates and the gTLD .com. The Panelist agrees with the Complainant that the addition of generic or geographical terms does not distinguish the Domain Names from the Complainant’s trademark.
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of the Domain Names is commercial and so cannot be legitimate non-commercial use.
The web site which is or has been attached to the Domain Names used the Complainant's official logo, copied material from the Complainant’s web site, and referred to real projects of the Complainant, thereby strongly suggesting that there is a commercial connection with the Complainant when there is not. The Panel finds this use is deceptive and passing off. As such, it cannot amount to the bona fide offering of goods and services or fair use. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s web site in order to cause existing or potential customers of the Complainant’s to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name).
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Names in relation to the Respondent’s site is confusing and disruptive in that visitors to those sites might reasonably believe they are connected to or approved by the Complainant as the Complainant’s trademark, official logo, and material from the Complainant’s web site are or was used without permission. The use of the Complainant's logo and material from its web site on the Respondent’s sites shows that the Respondent is aware of the Complainant and its business.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of said web sites likely to disrupt the business of the Complainant. See Allianz of AM. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iv) and 4(b)(iii). There is no need to consider further grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronoilae.com> and <chevronoiluae.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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