Sinclair Oil Corporation v. Jucco Holdings
Claim Number: FA0607000765717
Complainant is Sinclair Oil Corporation (“Complainant”), represented by John C. Stringham, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Jucco Holdings (“Respondent”), 655 Flower St #337, Los Angeles, CA 90017.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sinclairoil.net>, registered with Nameking.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2006.
On July 31, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sinclairoil.net> domain name 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 August 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2006 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@sinclairoil.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <sinclairoil.net> domain name is confusingly similar to Complainant’s SINCLAIR mark.
2. Respondent does not have any rights or legitimate interests in the <sinclairoil.net> domain name.
3. Respondent registered and used the <sinclairoil.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sinclair Finance Company, holds registrations with the United States Patent and Trademark Office for the SINCLAIR mark (e.g. Reg. No 1,006,485 issued March 11, 1975; Reg. No. 1,006,2006 issued March 11, 1975). Complainant uses the SINCLAIR mark in connection with gas station services, and related goods such as motor oils, engine fuels and service station apparel.
The <sinclairoil.net> domain name was registered on September 13, 2004 to LaPorte Holdings. LaPorte Holdings used the disputed domain name to redirect Internet users to its website, which was composed of links to commercial third-party websites, as well as links to adult oriented websites and gambling websites. Recently, the disputed domain name was transferred to Respondent. After the transfer to Respondent, the previous content was removed from the website connected to the disputed domain name and currently the disputed domain name does not resolve to any content.
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 SINCLAIR mark
through registration of the mark with the USPTO. Complainant’s registration of the SINCLAIR mark creates rights
sufficient to meet the requirements of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("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."); see also Innomed Techs., 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 <sinclairoil.net>
domain name is confusingly similar to Complainant’s SINCLAIR mark. The disputed domain name contains
Complainant’s mark in its entirety, which the panel in Oki Data Ams.,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), found was sufficient to
establish confusing similarity even when other terms are added to the
mark. The term “oil” has been added to
Complainant’s SINCLAIR mark. Since
Complainant operates gas stations, and its goods include motor oil, the term
“oil” describes a component of Complainant’s business. The addition of a descriptive term
referencing the complainant’s business does not create a distinct domain name
according to the panel in Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000). Thus, the
Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights or legitimate interests in the <sinclairoil.net> domain name pursuant to Policy ¶ 4(a)(ii). Complainant’s assertion constitutes a prima facie case under the Policy and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). As stated by the panel in G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), “because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).” Respondent has the opportunity to present the Panel with evidence of its rights or legitimate interests in the disputed domain name by submitting a Response, and the Panel presumes that Respondent’s failure to do so indicates that Respondent lacks those rights or legitimate interests. The panel in Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), found that, “Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.” Thus, the Panel will examine the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
There is no evidence that Respondent is commonly known by
the disputed domain name, indeed Respondent’s WHOIS information identifies
Respondent as “Jucco Holdings.” The
panel in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003), found that the identifying information in the respondent’s WHOIS
registration information may be considered when determining whether or not the
respondent is commonly known by the disputed domain name. Further, Complainant asserts without contradiction
that Respondent is not affiliated with Complainant and does not have permission
from Complainant to reflect Complainant’s SINCLAIR mark in a domain name. In Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003), the panel found that, “due to
the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information
reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not
‘commonly known by’ any of the disputed domain names prior to their
registration, and concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent.” Thus, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii) because nothing in the record
indicates that Respondent is commonly known by the <sinclairoil.net> domain
name.
Complainant provided
extensive evidence that the <sinclairoil.net> domain name was used
to redirect Internet users to a website populated with links to commercial
third-party websites while registered to LaPorte Holdings. However, Complainant also stated that those
links were removed from the website after the transfer of the domain name to
Respondent. Thus, Respondent is not
responsible for the links website.
However, Respondent is currently warehousing the disputed domain name
and has provided the Panel with no evidence of demonstrable preparations to use
the disputed domain name in connection with a bona fide offering of
goods or services as contemplated by Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). The panel in Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000), found that the respondent had no rights or
legitimate interests where the respondent failed to submit a response to the
complaint and had made no use of the domain name in question. Similarly, in Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001),
the panel determined that no rights or legitimate interests could be found when
the respondent failed to use the disputed domain names in any way. Thus, the Panel finds that Respondent lacks
rights or legitimate interests in the disputed domain name because there is no
evidence of demonstrable preparations for use of the disputed domain name.
The Panel is not limited to the circumstances outlined in Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), stated that “[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.” The panel in CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000), agreed with that interpretation stating that, “[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.” Thus, the Panel will examine the totality of the circumstances to determine whether there is evidence of bad faith registration and use on the part of Respondent.
Complainant’s SINCLAIR mark is well established and
famous. The panel in, Digi Int’l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), stated that, “[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.” The fact that the disputed domain name
includes Complainant’s entire mark combined with the descriptive term “oil,”
which has an obvious relationship to Complainant’s business suggests that
Respondent had actual knowledge of Complainant’s mark when registering the
disputed domain name. The panel in Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000), found that the respondent’s registration and use of an identical
and/or confusingly similar domain name was in bad faith where the complainant’s
BEANIE BABIES mark was famous and the respondent should have been aware of
it. Further, in Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002), the panel found that
“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 in Orange Glo Int’l based
its findings on the court’s holding in Victoria’s
Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001), where the court noted that a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption.” Thus, even if
Respondent lacked actual knowledge of Complainant’s mark, which is in doubt,
Respondent certainly had constructive knowledge of Complainant’s rights in the
SINCLAIR mark and registered the <sinclairoil.com> domain name
despite such knowledge. The Panel finds
that such registration was in bad faith pursuant to Policy ¶ 4(a)(iii).
While Respondent is not currently making active use of the disputed domain name, Respondent has also failed to present any evidence of preparations for use of the disputed domain name. In Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), the panel found that merely holding an infringing domain name without active use can constitute use in bad faith. Similarly, in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel found that the respondent’s failure to use the disputed domain name was evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel finds that Respondent’s current holding of the disputed domain name inactive is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sinclairoil.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 15, 2006
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