Hess Corporation v. Lisa Katz / Domain Protection LLC
Claim Number: FA1510001643035
Complainant is Hess Corporation (“Complainant”), represented by Paul J. Reilly of Baker Botts L.L.P., New York, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hessgasstation.com>, registered with Fabulous.com Pty Ltd.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 19, 2015; the Forum received payment on October 19, 2015.
On October 20, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <hessgasstation.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 October 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2015 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@hessgasstation.com. Also on October 22, 2015, 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 November 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has registered the HESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 832,393, registered July 25, 1967), demonstrating rights in the mark. Complainant uses the HESS mark in connection with its business in the oil and gas industry. Respondent’s <hessgasstation.com> domain name is confusingly similar to the HESS mark as the domain incorporates the mark entirely and merely adds the descriptive terms “gas” and “station.” Further, Respondent has added the generic top-level domain (“gTLD”) “.com,” which is an insufficient addition when considering confusing similarity of a domain.
Respondent has no rights or legitimate interests in respect of the <hessgasstation.com> domain name. Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii). The WHOIS information lists “Lisa Katz” as registrant. Further, the resolving website is merely a parked page, with a number of click-through links which compete with Complainant.
Respondent registered and used the disputed <hessgasstation.com> domain in bad faith under Policy ¶ 4(a)(iii). Because Respondent presumably profits commercially via various click-through hyperlinks, bad faith attraction for commercial gain has been demonstrated, under Policy ¶ 4(b)(iv). In addition, due to the longstanding use and notoriety of the HESS mark, Respondent had actual or constructive knowledge of the mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Hess Corporation, uses the HESS mark in connection with its business in the oil and gas industry. Complainant has rights in the HESS mark through registration with the United States Patent and Trademark Office. (e.g., Reg. No. 832,393, registered July 25, 1967). Respondent’s <hessgasstation.com> domain name is confusingly similar to the HESS mark.
Respondent, Lisa Katz / Domain Protection LLC, registered the <hessgasstation.com> domain name on December 17, 2004. Respondent’s resolving website is a parked page, with a number of click-through links which compete with Complainant.
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(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.”).
Complainant has rights in the HESS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <hessgasstation.com> domain name is confusingly similar to Complainant’s HESS mark under Policy ¶ 4(a)(i) because it is differentiated by only the additions of the terms “gas” and “station” and the gTLD “.com.”
Respondent is not commonly known by the <hessgasstation.com> domain name under Policy ¶ 4(c)(ii). The WHOIS information lists “Lisa Katz” as registrant. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent fails to use the <hessgasstation.com> domain name to provide a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii), because Respondent uses the resolving website to host links which compete with Complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
Respondent uses the <hessgasstation.com> domain in bad faith under Policy ¶ 4(b)(iv) to attract Internet users for commercial gain, because the resolving website contains links to competitors of Complainant, from which Respondent presumably receives pay-per-click fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent registered the <hessgasstation.com> domain name with actual knowledge of Complainant’s rights in the HESS mark. Therefore, Respondent registered and uses the <hessgasstation.com> domain in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hessgasstation.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 1, 2015
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