Amerada Hess Corporation v. LaPorte
Holdings Inc.
Claim
Number: FA0501000406845
Complainant is Amerada Hess Corporation (“Complainant”),
represented by Russell H. Falconer, of Baker Botts L.L.P.,
30 Rockefeller Plaza, 44th Floor, New York, NY 10112-4498. Respondent is LaPorte Holdings, Inc. (“Respondent”), c/o Nameking, Inc., 2202 S.
Figueroa Street, Suite 721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hessgasstations.com>, registered with Nameking.com,
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.
Judge
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
20, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 24, 2005.
On
January 21, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hessgasstations.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. registration agreement and has thereby agreed
to resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
January 31, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 21, 2005 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@hessgasstations.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 28, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Judge Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <hessgasstations.com>
domain name is confusingly similar to Complainant’s HESS and HESS-formative
marks.
2. Respondent does not have any rights or
legitimate interests in the <hessgasstations.com> domain name.
3. Respondent registered and used the <hessgasstations.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Amerada Hess Corporation, is an integrated gas and oil company with its
headquarters in New York City.
Complainant has been in the business of oil and gas exploration and
production as well as the purchase, transport, and sale of crude oil and gas since
1920. Complainant, in its present form,
is the result of a merger between Hess Oil & Chemical Corporation and
Amerada Petroleum Corporation on June 20, 1969. Exploration and production activities are conducted in countries
including, but not limited to, the United States, United Kingdom, Norway,
Denmark, Gabon, Indonesia, Thailand, Azerbaijan, Algeria, Colombia, Equatorial
New Guinea, and Malaysia. Complainant
also manufactures, purchases, transports, trades and markets refined petroleum
and other energy products such as natural gas and electricity.
A major business
of Complainant is the ownership and operation of an extensive chain of more
than 1,270 retail gas stations located in Connecticut, Delaware, Florida,
Georgia, Maryland, Massachusetts, New Hampshire, New Jersey, New York, North
Carolina, Pennsylvania, Rhode Island, South Carolina and Virginia. Complainant’s chain of stations is serving
customers over approximately 1,500 miles, generating annual revenues of $5
billion. Complainant has been operating
such gas stations since its first station opened in 1960.
Complainant
holds numerous trademark registrations with the United States Patent and
Trademark Office for the HESS and HESS-formative marks (Reg. No. 1,391,095
issued April 22, 1986; Reg. No. 832,393 issued July 25, 1967; Reg. No. 836,095
issued September 26, 1967; and Reg. No. 836,173 issued October 3, 1967).
Complainant
operates its main website at <hess.com>.
Respondent
registered the <hessgasstations.com> domain name on December 10,
2003. Respondent is using the domain
name to redirect Internet users to a website that features a search engine that
specifically provides links to third-party sponsored websites, mainly relating
to travel.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of the
Rules.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
HESS mark as evidenced by its registrations with the United States Patent and
Trademark Office and through continued use of its mark in commerce over the last
eighty-five years. See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of complainant to register all possible domain names
that surround its substantive mark does not hinder complainant’s rights in the
mark. “Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves”).
The <hessgasstations.com>
domain name registered by Respondent is confusingly similar to Complainant’s
HESS mark because the domain name incorporates Complainant’s mark in its
entirety and simply adds the generic or descriptive terms, “gas” and
“stations.” The mere addition of
generic or descriptive terms does not negate the confusing similarity of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of complainant combined with a generic word
or term); see also Sony Kabushiki
Kaisha v. Inja, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the name
in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where respondent’s domain name combines complainant’s mark with a
generic term that has an obvious relationship to complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
has alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of Respondent.
In those circumstances, the common approach is for [R]espondents to seek to
bring themselves within one of the examples of paragraph 4(c) or put forward
some other reason why they can fairly be said to have a relevant right or
legitimate interests in respect of the domain name in question”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by complainant that respondent has no
right or legitimate interest is sufficient to shift the burden of proof to
respondent to demonstrate that such a right or legitimate interest does exist);
see also Woolworths plc. v.
Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent evidence of
preparation to use the domain name for a legitimate purpose, the burden of
proof lies with respondent to demonstrate that it has rights or legitimate
interests).
Moreover,
where Respondent does not respond, the Panel may accept reasonable allegations
and inferences in the Complaint as true.
See 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.”); see also
Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure
of a respondent to come forward to [contest complainant’s allegations] is
tantamount to admitting the truth of complainant’s assertion in this regard”); see
also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat.
Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel
is free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Respondent’s
<hessgasstations.com> domain name fully incorporates Complainant’s
mark and redirects Internet users to a website that features a search engine
that specifically provides links to third-party sponsored websites, mainly
relating to travel. The Panel finds
that Respondent’s use of a domain name that is confusingly similar to
Complainant’s mark that attracts Internet users and redirects them to a website
with links to travel-related goods and services is not a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
complainant’s mark, websites where respondent presumably receives a referral
fee for each misdirected Internet user, was not a bona fide offering of goods
or services as contemplated by the Policy); see
also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA
100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate
interests in the disputed domain name where respondent was using complainant’s
mark to redirect Internet users to a website offering credit card services
unrelated to those services legitimately offered under complainant’s mark); see
also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar.17,
2003) (finding that respondent’s diversionary use of complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Nothing
in the record, including the WHOIS domain name registration information for the
<hessgasstations.com> domain name suggests that Respondent is
commonly known by the domain name or by Complainant’s HESS mark pursuant to
Policy Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v.
Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) respondent is not a licensee of
complainant; (2) complainant’s rights in the mark precede respondent’s
registration; (3) respondent is not commonly known by the domain name in
question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <hessgasstations.com> domain name in an attempt to
intentionally attract Internet users interested in locating Complainant’s HESS
products and services. Additionally,
Respondent presumably derives commercial benefit from these intentional
diversions through click-through fees from redirecting Internet users to other
commercial websites, some of which offer products and services that compete
with those of Complainant. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill and
reputation associated with Complainant’s mark.
Respondent’s practice of diversion, motivated by commercial gain,
through the use of a confusingly similar domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where respondent attracted users to a website sponsored by respondent and
created confusion with complainant’s mark as to the source, sponsorship, or
affiliation of that website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known mark in its entirety and deviates only with the
addition of generic terms, suggests that Respondent knew of Complainant’s
rights in the HESS mark at the time the domain name was registered. Furthermore, the terms incorporated in the
domain name describe segments of Complainant’s business. Thus, the Panel finds that Respondent chose
the disputed domain name based on the distinctive and well-known qualities of
Complainant’s mark and therefore registered and used the domain name in bad
faith pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Harrods Ltd. v. Harrod’s Closet, D2001-1027
(WIPO Sept. 28, 2001) (finding that where a mark is so obviously connected with
well-known products, its very use by someone with no connection to these
products can evidence opportunistic bad faith); see also Household Int’l, Inc. v. Cyntom Enter.,
FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a
well-known business name for no particularly good reason undermines any claim
to legitimate interest, so it may also support an inference of a bad-faith
attempt to use the name to harass or exploit its legitimate owner… Respondent, if he ever was serious in the
registration of this domain name, must have relied on the good chance he would
attract [Complainant’s] customers”); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hessgasstations.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
March 14, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page