Chevron Intellectual Property LLC v. Domain ID Shield Service / Domain ID Shield Service CO., Limited
Claim Number: FA1905001841700
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, United States. Respondent is Domain ID Shield Service / Domain ID Shield Service CO., Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevronplacement.com> and <chevronjobsplacement.com>, registered with OnlineNIC, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2019; the Forum received payment on May 3, 2019.
On May 7, 2019, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <chevronplacement.com> and <chevronjobsplacement.com> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 May 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2019 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@chevronplacement.com, postmaster@chevronjobsplacement.com. Also on May 17, 2019, 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 June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 one of the world’s leading integrated energy companies that is active in all facets of the global energy industry, including research, exploration, production and transportation of crude oil and natural gas. Complainant has rights in the CHEVRON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 364,683, registered Feb. 14, 1939). Respondent’s <chevronplacement.com> and <chevronjobsplacement.com> domain names are confusingly similar to Complainant’s CHEVRON mark as the domain names each incorporate the CHEVRON mark in its entirety before Respondent adds the generic words “placement” and “jobs,” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names and Respondent has not been authorized to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to attempt to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and used the domain name in bad faith to disrupt the business of Complainant by causing internet users to think that an affiliation exists between Respondent’s domain names and Complainant by passing off as Complainant via email. Respondent had actual knowledge of Complainant’s rights in the CHEVRON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Chevron Intellectual Property LLC (“Complainant”), of San Ramon, CA, USA. Complainant is the owner of several dozen domestic and international registrations for the mark CHEVRON and variations thereof constituting the family of CHEVRON marks. Complainant has continuously used its CHEVRON mark since at least as early as 1945 in connection with its provision of goods and services pertaining to oil and gas exploration, as well as petroleum products.
Respondent is Domain ID Shield Service / Domain ID Shield Service CO., Limited (“Respondent”) of Hong Kong, China. Respondent’s registrar’s address is listed as the same. The Panel notes that Respondent registered the <chevronjobsplacement.com> domain name on or about October 26, 2018 and the <chevronplacement.com> domain name on or about October 10, 2018.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the CHEVRON mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant provided this Panel with copies of its USPTO registrations for the CHEVRON mark (e.g. Reg. No. 364,683, registered Feb. 14, 1939). The Panel here finds Complainant has rights in the CHEVRON mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <chevronjobsplacement.com> and <chevronplacement.com> domain names are confusingly similar to Complainant’s CHEVRON mark as the disputed domain names incorporate Complainant’s mark in its entirety and add the generic words “placement” and “jobs”. Prior panels have held that the addition of a generic term to a fully formed mark does not distinguish the domain name from the mark. See EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)). Past panels have also found the addition of a generic top-level domain (“gTLD”) is insufficient to distinguish a disputed domain name from a mark. See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”). The Panel here finds that Respondent’s domain names are confusingly similar to Complainant’s CHEVRON mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <chevronjobsplacement.com> and <chevronplacement.com> domain names because Respondent is not commonly known by the disputed domain names, nor was Respondent authorized to use Complainant’s CHEVRON mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed 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). The Panel here notes the WHOIS information for both domain names identifies Respondent as “Domain ID Shield Service / Domain ID Shield Service CO. Limited” and there is nothing in the record to suggest that Respondent is authorized to use the CHEVRON mark. The Panel here finds that Respondent is not commonly known by either disputed domain name per Policy ¶ 4(c)(ii).
Complainant additionally contends that Respondent fails to make a bona fide offering of goods or services or any legitimate noncommercial or fair use as Respondent uses the domain names in an effort to have third party email recipients send personal information to Respondent. Panels have held in prior cases that a respondent using a disputed domain to pass off as an employee of a complainant in furtherance of phishing is not a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Here, Complainant has provided the Panel with email communications in which Respondent purportedly uses the domain names to pass off as Complainant. The Panel here finds that Respondent fails to make a bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent registered and used the domain name in bad faith to disrupt the business of Complainant by causing internet users to think an affiliation exists between Respondent’s domain names and Complainant. Use of a disputed domain name to pass off as an employee of a complainant’s business in furtherance of phishing can demonstrate bad faith per Policy ¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Here, Complainant provides the panel with copies of fraudulent job offer letters and further states in the Complaint that they never authorized Respondent to use their CHEVRON mark. The Panel here finds that Respondent registered and use the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv).
Complainant next argues that Respondent had actual knowledge of Complainant’s rights in the CHEVRON mark because of Complainant's widespread use of the mark and its trademark registrations with the USPTO as well as Respondent’s reference to Complainant and Complainant’s marks in the emails in which Respondent impersonated Complainant. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here may conclude that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the CHEVRON mark thus constituting bad faith per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronplacement.com> and <chevronjobsplacement.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 21, 2019
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