Chevron Intellectual Property LLC v. Bruce C. Whitehurst / Xray Eye & Vision Clinics
Claim Number: FA2008001907247
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Bruce C. Whitehurst / Xray Eye & Vision Clinics (“Respondent”), Sierra Leone.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-com.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2020; the Forum received payment on August 4, 2020.
On August 6, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <chevron-com.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2020 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@chevron-com.com. Also on August 7, 2020, 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 September 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Chevron Intellectual Property LLC, is an integrated energy company. Complainant asserts rights in the CHEVRON mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <chevron-com.com> domain name is confusingly similar to Complainant’s mark, as it incorporates the CEVRON mark in its entirety and merely adds the term “-com” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <chevron-com.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the CHEVRON mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate or noncommercial fair use. Rather, Respondent uses the domain name to pass off as connected to Complainant in furtherance of a fraudulent email scheme.
Respondent registered the <chevron-com.com> domain name in bad faith. Respondent intentionally targeted Complainant’s mark in order to profit off of Internet users’ confusion. Respondent uses the domain name to pass off as Complainant in fraudulent emails in an attempted phishing scheme. Respondent’s registration of the disputed domain name constitutes typosquatting. Finally, Respondent had actual knowledge of the Complainant’s rights in the CHEVRON mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is an integrated energy company.
2. Complainant has established its trademark rights in the CHEVRON mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”).
3. Respondent registered the disputed domain name on May 27, 2020.
4. Respondent uses the disputed domain name to pass itself off as connected to Complainant in furtherance of a fraudulent email scheme.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CHEVRON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with a trademark agency such as the USPTO is sufficient to demonstrate rights in the mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 364,683, registered February 14, 1939) See Compl. Ex. D. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CHEVRON mark. Complainant argues that Respondent’s <chevron-com.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the CHEVRON mark in its entirety and merely adds the generic phrase “-com” and the “.com” gTLD. Adding “com” to a mark does not save it from a finding of confusing similarity. See Borders Props., Inc. v. Hewitt, FA 114618 (Forum July 23, 2002) (“The added ‘com’ does not defeat a confusing similarity claim because it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.”). Additionally, the addition of “.com” is irrelevant to determination of confusing similarity. Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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”).
(a) Respondent has chosen to take Complainant’s CHEVRON trademark and to use it in its domain name, merely adding the generic phrase “-com”” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on May 27, 2020;
(c) Respondent uses the domain name to pass itself off as connected to Complainant in furtherance of a fraudulent email scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interest in the <chevron-com.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CHEVRON mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “Bruce C. Whitehurst / Xray Eye & Vision Clinics” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain name. See Compl. Ex. B. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <chevron-com.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name in furtherance of an email phishing scheme. Use of a disputed domain name in furtherance of a fraudulent scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). Here, Complainant claims that Respondent registered the disputed domain name to cause confusion by sending emails to Complainant’s customers in an attempt to solicit business and financial information, including actual payments. See Compl. Ex. L. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <chevron-com.com> domain name in bad faith because Respondent targeted Complainant’s well-known mark with intent to deceive Internet users. Use of a confusingly similar domain name to mislead Internet users is evidence of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”) Complainant argues that Respondent intentionally targeted the CHEVRON mark to create a likelihood of confusion in order to attract Internet users familiar with Complainant for their own financial gain. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent’s use of the <chevron-com.com> domain name in furtherance of a phishing scheme is further evidence of bad faith. Use of a disputed domain name in furtherance of a fraudulent scheme may constitute bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). As noted previously, Complainant claims that Respondent registered the disputed domain name to cause confusion by sending emails to Internet users passing itself off as Complainant to solicit business and financial information, including actual payments. See Compl. Ex. L. The Panel finds this is evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant claims Respondent’s registration of the <chevron-com.com> domain name is an example of typosquatting. Typosquatting itself is independent evidence of bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, Complainant argues that the addition of the non-distinctive term “-com” is intended to mimic the “.com” gTLD visually and therefore heightens confusion and capitalizes on users’ typographical errors. As the Panel agrees that Respondent’s domain name constitutes typosquatting, the Panel finds bad faith registration under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent registered the disputed domain name with knowledge of Complainant’s rights in the CHEVRON mark. Per Policy ¶ 4(a)(iii), actual knowledge may be established through a mark’s notoriety and the respondent’s use of the mark. See 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.”). As previously noted, Respondent uses the CHEVRON mark and names of Complainant’s employees in their fraudulent emails. See Compl. Ex. L. Thus, the Panel finds this is evidence of actual knowledge and of bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevron-com.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 2, 2020
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