Exxon Mobil Corporation v. Alessandri Stefani
Claim Number: FA1810001811532
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Alessandri Stefani (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxonmobil.cloud>, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2018; the Forum received payment on October 12, 2018.
On October 15, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <exxonmobil.cloud> 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 October 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2018 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@exxonmobil.cloud. Also on October 19, 2018, 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 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 is the world’s largest, publically traded international oil and gas company. In 1999, Exxon Corporation and its subsidiaries joined with Mobil Corporation and its subsidiaries, including Mobil Oil Corporation, to create Exxon Mobil Corporation. Complainant has, since that time, used the EXXONMOBIL trademark in connection with its goods and services. Complainant also has rights in the EXXONMOBIL, EXXON, and MOBILE marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) and the European Intellectual Property Office (“EUIPO”). Respondent’s <exxonmobil.cloud> domain name is identical and/or confusingly similar to Complainant’s EXXONMOBIL and related marks as it merely adds the “.cloud” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <exxonmobil.cloud> domain name. Respondent is not authorized to use Complainant’s trademarks and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name currently does not resolve to any website content.
Respondent registered and uses the <exxonmobil.cloud> domain name in bad faith. Respondent fails to make active use of the disputed domain name. Furthermore, Respondent had actual knowledge of Complainants’ rights in the EXXONMOBIL, EXXON, and MOBILE marks prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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.”).
Complainant claims rights in the EXXONMOBIL, EXXON, AND MOBILE trademarks based upon registration of the marks with the USPTO and the EUIPO. These registrations date back to 2001 for EXXONMOBILE, to 1970 for EXXON, and to 1938 for MOBILE. Registration of a mark with a national trademark registration body such as the USPTO or EUPO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of its EXXONMOBIL and related marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <exxonmobil.cloud> domain name is confusingly similar to the EXXONMOBIL and related marks, as the name incorporates the marks in their entirety while adding a “.cloud” gTLD. Adding a gTLD to a complainant’s mark may not be sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s EXXONMOBIL, EXXON, and MOBILE marks per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to the Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <exxonmobil.cloud> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EXXONMOBIL, EXXON, or MOBILE marks in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). In the present case, the WHOIS information of record identifies the registrant of the at-issue domain name as “Alessandro Stefani,” and no information of record indicates that Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <exxonmobil.cloud> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <exxonmobil.cloud> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent’s holding of the <exxonmobil.cloud> domain name without using it for any website or other purpose indicates that it does not have rights or legitimate interests in the name. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). As the disputed <exxonmobil.cloud> domain name does not resolve to an active webpage and is not being used by Respondent in any other way, the Panel finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that in light of the fame and notoriety of Complainant's EXXONMOBIL, EXXON, and MOBILE marks, it is inconceivable that Respondent could have registered the <exxonmobil.cloud> domain name without actual knowledge of Complainant's rights in the marks. The Panel agrees with Complainant that Respondent must have had actual knowledge of Complainant's rights in its marks prior to registering the disputed domain name and finds that actual knowledge is adequate evidence upon which to build a claim of bad faith under Policy ¶ 4(a)(iii). In a prior case against the present Respondent, the Panel found that “the Respondent was aware of the Complainant’s well-known SANOFI mark when registering the disputed domain names.” Sanofi v. Alessandro Stefani, D2017-1610 (WIPO October 11, 2017). The Panel here similarly finds that Respondent had actual knowledge of Complainant’s rights in the famous EXXONMOBILE, EXXON, and MOBILE marks when it registered the disputed domain name.
Complainant goes on to claim that Respondent registered and uses the <exxonmobil.cloud> domain name in bad faith. Specifically, Complainant asserts that Respondent’s failure to make any use of the <exxonmobil.cloud> domain name is evidence of its bad faith – essentially, a claim of what has become known as passive holding. Passive holding of a domain name that copies a mark can be evidence of bad faith under Policy ¶ 4(a)(iii). Beginning with the decision in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO 2000), many UDRP Panels have held that, after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.” Telstra, supra. That decision went on to say that “in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour.”) See also, VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As the disputed domain name copies Complainant’s famous trademarks, as it does not resolve to any website content, and as there is no evidence of record to indicate that it is used for any other purpose, the Panel finds that Respondent has passively held the domain name and that this is evidence of its bad faith registration and use per 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 <exxonmobil.cloud> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 12, 2018
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