Chevron Intellectual Property LLC v. Domain Admin / Tucows.com Co.
Claim Number: FA1612001706405
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Domain Admin / Tucows.com Co. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <havolineexpresslube.net>, registered with Tucows Domains 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2016; the Forum received payment on December 7, 2016.
On December 8, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <havolineexpresslube.net> 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 December 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@havolineexpresslube.net. Also on December 8, 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 January 9, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is one of the world's leading integrated energy companies with a global workforce of over 40,000 company employees and 3,500 service station employees. It is active in all facets of the global energy industry, including research, exploration, production and transportation of crude oil and natural gas; refining, marketing and distribution of transportation fuels and lubricants; manufacturing and sale of petrochemical products; generation of power and production of geothermal energy; providing energy efficiency solutions; and development of future energy resources, including research for advanced biofuels. Complainant supplies engine motor oil in bulk to hundreds of automotive oil change facilities in the U.S. Those lubricants include HAVOLINE branded lubricants which is Complainant’s premium, most well-known, and most advertised lubricant. Complainant also manufactures and authorizes the manufacture of HAVOLINE branded motor oil and other automotive-related products including antifreeze and window washer fluid. HAVOLINE motor oil is sold nationally in retail stores and promoted on television, in print ads and in other media. Complainant registered the marks HAVOLINE and HAVOLINE XPRESS LUBE CHEVRON in the United States in 2012. The marks are famous.
According to Complainant, the disputed domain name is confusingly similar to its marks as the domain name includes the HAVOLINE mark in its entirety, and misspells “xpress” to include an “e”. The inclusion of the generic top-level domain (“gTLD”) “.net” does not alleviate the confusing similarity.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent had no permission or authorization to use Complainant’s marks and illegitimately creates a connection between the parties through use of the disputed domain name. Respondent’s use of the domain name, to resolve to a portal website featuring links advertising products and services in competition with Complainant, is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. Moreover, where a domain name is a mere typosquat of a mark and the use of the domain name is for hyperlink advertisement, the use of the mark does not confer any rights or legitimate interests.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent’s use of the disputed domain name demonstrates a bad faith attempt to disrupt the business of Complainant and to confuse and attract internet users for commercial gain through using Complainant’s mark to profit from related advertisements.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the marks HAVOLINE and HAVOLINE XPRESS LUBE CHEVRON dating back to 2012.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to resolve to a web site that contains links to products and services that compete with those of 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(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 disputed domain name is confusingly similar to the HAVOLINE and HAVOLINE XPRESS LUBE CHEVRON marks. It includes the entire HAVOLINE mark and differs from the mark through the addition of the terms, “express” and “lube” and the gTLD “.net.” It is also similar to the HAVOLINE XPRESS LUBE CHEVRON as the domain name merely adds an “e” in “xpress” and omits the term “chevron.” Panels have found that the addition of generic words and gTLDs to a mark in a domain name does not alleviate confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Panels have also held that the omission of a letter in a domain name does not prevent a finding of confusing similarity. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel concludes that the disputed domain name is confusingly similar to Complainant’s marks mark for purposes of Policy ¶ 4(a)(i).
Respondent had no permission or authorization to use Complainant’s marks. The WHOIS information lists “Domain Admin/Tucows” as registrant, but Respondent has failed to provide any evidence for the Panel’s consideration. Accordingly, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name.) Further, Panels have held that a respondent is not commonly known by a disputed domain name where a complainant never authorized a respondent to incorporate a mark in a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Accordingly, the Panel finds that Respondent has not been commonly known by the disputed domain name.
The disputed domain name is not being used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. It resolves to a website that displays various related links with titles such as, “Oil Change Near Me,” “Havoline,” and “Xpress Lube.” Clicking on the link titled “Oil Change Synthetic Oil” leads to a page advertising the services of Complainant’s competitors such as, “Castrol Motor Oil,” “Pennzoil,” and various other oil change products and services. Panels have held that using a complainant’s mark for the purposes of advertising competing and related services and products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). The Panel thus holds that Respondent’s use of the domain name is not within the parameters of Policy ¶ 4 (c)(i) or ¶ 4(c)(iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as noted above, the disputed domain name resolves to a website hosting related links and advertisements for services and products that are in competition with Complainant’s business of providing oil change products and services. Thus Respondent’s use of the domain names indicates bad faith as the use competes and disrupts Complainant’s business and confuses and attracts internet users for commercial gain. Panels routinely conclude that a respondent has demonstrated bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv) where they used a confusingly similar domain name to advertise commercial services that compete with a complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”). The Panel finds that Respondent’s use of the domain demonstrates bad faith under Policy ¶ 4(b)(iii) and/or ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <havolineexpresslube.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 10, 2017
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