Chevron Corporation v. MustNeed.com c/o
for Customers, Reserved
Claim
Number: FA0506000497773
Complainant is Chevron Corporation (“Complainant”), represented
by Eliane Setton, 6001 Bollinger Canyon Road, T-3044,
San Ramon, CA 94583. Respondent is MustNeed.com c/o for Customers, Reserved
(“Respondent”), P.O. Box 3506, Taipei, Taiwan, TW, 100-00.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <techron.com>, registered with Moniker
Online Services, Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
16, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 20, 2005.
On
June 29, 2005, Moniker Online Services, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <techron.com> is registered
with Moniker Online Services, Inc. and that Respondent is the current
registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services,
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
June 30, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 20, 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@techron.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
July 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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 <techron.com>
domain name is identical to Complainant’s TECHRON mark.
2. Respondent does not have any rights or
legitimate interests in the <techron.com> domain name.
3. Respondent registered and used the <techron.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Chevron Corporation, holds a trademark registration with the United States
Patent and Trademark Office (“USPTO”) for the TECHRON mark (Reg. No. 1,612,515
issued September 11, 1990) related to gasoline and gasoline additives.
Respondent
registered the <techron.com> domain name on November 17,
2003. Respondent is using the disputed
domain name to redirect Internet users to Respondent’s website featuring links
and pop-up advertisements for unrelated third parties.
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. 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 (Nat. Arb. 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.").
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 has
established rights in the TECHRON mark through registration of the mark with
the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of
the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <techron.com> domain name is identical to
Complainant’s TECHRON mark because the domain name contains Complainant’s mark
in its entirety and merely adds the generic top-level domain “.com.” The Panel finds that such a minor addition to Complainant’s
registered mark is insufficient to negate the identicalness of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Shirmax Retail Ltd./Detaillants Shirmax Ltee
v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to
interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in
holding that “mere identicality of a domain name with a registered trademark is
sufficient to meet the first element [of the Policy], even if there is no
likelihood of confusion whatsoever”); see also Pomellato S.p.A v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to the complainant’s mark because the generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302
(Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>,
is identical to Complainant's KIOTI mark because adding a top-level domain name
is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds
the Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <techron.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have rights
or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have rights or legitimate interests with
respect to the domain name, it is incumbent on respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); 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 the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or legitimate
interest does exist).
Respondent is
using the <techron.com> domain name to redirect Internet users to
Respondent’s website featuring links and pop-up advertisements for unrelated
third parties. The Panel finds that
Respondent’s use of a domain name that is identical to Complainant’s TECHRON
mark to redirect Internet users interested in Complainant’s services to
Respondent’s website featuring links and pop-up advertisements for products and
services of unrelated third parties is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO
Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire
mark in domain names makes it difficult to infer a legitimate use); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user).
Respondent was
not authorized or licensed by Complainant to register or use a domain name
incorporating Complainant’s TECHRON mark.
Nothing in the record shows that Respondent holds a trademark or is commonly
known by the <techron.com> domain name pursuant to Policy ¶
4(c)(ii). Therefore, the Panel finds
that Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. 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 whether Policy
¶ 4(c)(ii) applies); 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) the respondent is not a licensee
of the complainant; (2) the complainant’s rights in the mark precede the
respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <techron.com> domain name, which is identical to
Complainant’s TECHRON mark, for Respondent’s commercial gain. Respondent’s domain name redirects Internet
users searching under Complainant’s TECHRON mark to Respondent’s website. Respondent is unfairly and opportunistically
benefiting from the goodwill associated with Complainant’s TECHRON mark. Respondent’s practice of diversion,
motivated by commercial gain, 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
the respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also
Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum
June 3, 2003) (stating that “[s]ince the disputed domain names contain entire
versions of Complainant’s marks and are used for something completely unrelated
to their descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine
website” in holding that the domain names were registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons
Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)
through the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also State Fair
of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
(finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website).
Furthermore,
Respondent registered the <techron.com> domain name with actual or
constructive knowledge of Complainant’s rights in the TECHRON mark due to
Complainant’s registration of the mark with the USPTO. Registration of a domain name that is
identical to another’s mark despite actual or constructive knowledge of the
mark holder’s rights is tantamount to bad faith registration and use 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 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 <techron.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
August 2, 2005
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