Chevron Intellectual Property LLC v. Jan Geursen / Scanwic BV
Claim Number: FA1611001704758
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Melissa Alcantara of Dickinson Wright PLLC, United States of America. Respondent is Jan Geursen / Scanwic BV (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texaco.shop>, registered with Tucows Domains 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 28, 2016; the Forum received payment on November 28, 2016.
On November 29, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <texaco.shop> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 November 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@texaco.shop. Also on November 29, 2016, 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 December 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Chevron Intellectual Property LLC, owns numerous prior registrations for marks consisting of or containing TEXACO in connection with a wide range of products and services, including gasoline, lubricants, operating service stations, lubrication services, and credit card services. Complainant also owns a prior domain name registration for <texaco.com>, which is used to host Complainant’s website promoting its goods and services offered under the TEXACO mark.
Complainant owns and shows evidence of trademark registrations with the USPTO for the TEXACO mark (e.g., Reg. No. 57,902, registered Dec. 4, 1906).
Respondent’s <texaco.shop> is identical to the TEXACO mark because it includes the entire mark with only the “.shop” top-level domain (“TLD”) suffix added.
Respondent has no rights or legitimate interests for the following reasons: Respondent is not commonly known by <texaco.shop>, and Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because the domain name resolves to a website promoting the services of a domain reseller and which advertises that the domain name is for sale.
Respondent registered and used <texaco.shop> in bad faith. The main purpose of the website is to sell the domain name. Further, the domain name’s identity with Complainant’s TEXACO mark disrupts the traffic to Complainant’s own websites and creates confusion for the purpose of commercially gaining under both Policy ¶¶ 4(b)(iii) and (iv), respectively. Respondent also registered <texaco.shop> with actual knowledge, given the fame of the TEXACO mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However in its email correspondence with the FORUM Respondent informally responds in part as follows:
The owner of the Intellectual Property is entitled to the domain name and from your documentation it seems that this is the case with your client [sic].
The amount is euro 900,- (about $ 960) to cover all general expenses for the transfer.
If your client [sic] wishes to purchase the domain www.texaco.shop please confirm and we will send the invoice including the information needed to facilitate the transfer.
Our customers appreciate the fact that we secured their domain in this way, so they with minor cost and minimal effort, obtain the domain name.
And further:
Please give the contact information at Chevron in order to transfer the domain name.
There is no dispute, domain names will be transferred to the owner of the intellectual property, but we need the necessary information to facilitate this.
Complainant has rights in the TEXACO mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its TEXACO trademark.
Respondent registered the at-issue domain name because of its trademark value to deny Complainant the domain name and ultimately to sell it to Complainant or a third party for an amount in excess of the domain name’s cost.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its TEXACO mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man).
The at-issue domain name contains Complainant’s entire TEXACO trademark followed by the top-level domain name “.shop”. While the top-level domain name is generally irrelevant for the purpose of the Policy, in the instant case the use of the descriptive “.shop” top-level domain name is suggestive of Complainant’s TEXACO related business and thus increases any confusion between Complainant’s trademark and Respondent’s domain name. Therefore, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s TEXACO mark. See Avaya Inc. v. Robert Bird, FA 1603045 (Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion . . .”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Jan Geursen / Scanwic BV.” Respondent does not appear to be an authorized vendor, supplier, or distributor of Complainant’s goods or services and there is nothing in the record which tends to otherwise show that Respondent may be known by the at-issue domain name. Therefore, the Panel concludes for the purposes of Policy ¶ 4(c)(ii)that Respondent is not commonly known by the at-issue domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Respondent’s at-issue domain name was registered and used so that it might be sold to Complainant or perhaps a third party for a sum in excess of Respondent’s out of pocket costs. Not only does the domain name address a webpage for DJESS Media Services which is in the business of selling domain names, but Respondent also admits in its email response to the FORUM that it registered the <texaco.shop> domain name to sell it to Complainant for a price above the domain name’s registration fee. Respondent’s use of the at-issue domain name in this manner 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 See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), Respondent registered and used the <texaco.shop> domain name to sell it to Complainant, or the highest bidder. Such use of the domain name demonstrates Respondent’s bad faith registration and use of <texaco.shop> under Policy ¶ 4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”). Further, simply holding the confusingly similar at-issue domain name in inventory prevented Complainant from registering or using the <texaco.shop> domain name -a natural consequence of registering a domain name containing another’s trademark. Indeed, Respondent’s de facto business model of selling domain names containing trademarks in which it has no rights permits a finding that Respondent has engaged in a pattern of such conduct and thereby demonstrates Respondent’s bad faith under Policy ¶ 4(b)(ii).
Additionally, Respondent registered the <texaco.shop> domain name with actual knowledge of Complainant’s TEXACO trademark. Respondent’s knowledge of Complainant’s mark is inferred from the notoriety of Complainant’s famous trademark, but perhaps more significantly from Respondent’s admitted intent to sell the trademark rich domain name to Complainant. Under these circumstances it is not possible that Respondent was unaware of Complainant’s TEXACO mark when it registered <texaco.shop>. Respondent’s actual knowledge of Complainant’s rights in the TEXACO mark prior to its registering the at-issue domain name further urges that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texaco.shop> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 21, 2016
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