Chevron Intellectual Property LLC v. Zhichao Yang / leed johnny
Claim Number: FA2008001909410
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, United States. Respondent is Zhichao Yang / leed johnny (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevrontaxacocards.com>, <chevronteacocards.com>, <chevrontexacocads.com>, <chevrontexacocars.com>, <chevrontexacocrds.com>, <chevrontexaocards.com>, <chevrontxacocards.com>, and <chevrontexacobusinescard.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2020; the Forum received payment on August 20, 2020.
On August 24, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <chevrontaxacocards.com>, <chevronteacocards.com>, <chevrontexacocads.com>, <chevrontexacocars.com>, <chevrontexacocrds.com>, <chevrontexaocards.com>, <chevrontxacocards.com>, and <chevrontexacobusinescard.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 September 1, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both English and Chinese, setting a deadline of September 21, 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@chevrontaxacocards.com, postmaster@chevronteacocards.com, postmaster@chevrontexacocads.com, postmaster@chevrontexacocars.com, postmaster@chevrontexacocrds.com, postmaster@chevrontexaocards.com, postmaster@chevrontxacocards.com, postmaster@chevrontexacobusinescard.com. Also on September 1, 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 24, 2020, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant submits evidence showing that:
a) All the disputed domain names are being used in an identical manner. Specifically, each of the disputed domain names resolves to a pay-per-click links page that features the CHEVRON and/or TEXACO mark and a series of links to unrelated third-parties purporting to offer credit cards, gift cards, or reward cards, and other commercial offerings unrelated to Complainant.
b) All of the disputed domain names utilize a highly similar format, namely, the CHEVRON mark followed by the TEXACO mark (or a close misspelling thereof) and the generic term CARD or BUSINESS CARD (or a close misspelling thereof).
c) All of the disputed domain names utilize the same registrar, Alibaba Cloud Computing (Beijing) Co., Ltd..
d) Historical WHOIS records show that the current listed registrant of the <chevrontexacobusinesscard.com> domain name – Li Jiang (or Jiang Li) having an email address of johnnyleed@gmail.com – once was the listed registrant of the <chevronteacocards.com>, <chevrontexacocads.com>, and <chevrontxacocards.com> domain names before allowing those domain name registrations to lapse and then reregistering them under the name “Zhichao Yang.”
e) The <chevrontexacobusinesscard.com> domain name was registered one year before the others. However, its registration was transferred from a previous registrar to the current registrar in the same time frame as the other domain names were registered.
Complainant aptly cites UDRP precedents that are relevant for the facts outlined above:
a) Panels have found domain names to be under common ownership or control where they are being used in substantially the same manner. See, e.g., Eli Lilly and Company v. Thomas Michael et al., FA1638884 (Forum Dec. 10, 2015) (finding multiple domain names to be under common control in part because they “all resolve to the same on-line pharmacy where the web pages are similar, all offering pharmaceutical products of the same nature”); Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, D2010-0281 (WIPO May 18, 2010) (finding domain names to be “commonly controlled where the content of their websites were substantially identical.”).
b) The shared use of a similar format in domain names constitutes evidence that domain names are under common ownership or control. See The Toronto-Dominion Bank v. marc charles / cimpinca6 / marco miliano / duville / joe bloe / none / batti picka / none, FA1579226 (Forum Nov. 3, 2014) (finding domain names to be under common control in part because “the disputed domain names each follow a similar format that consists of Complainant’s trademark combined with a generic word that relates to Complainant’s business”).
c) Use of a common registrar constitutes evidence that the domains are under common ownership or control. See Sunbelt Rentals, Inc. v. VistaPrint Technologies c/o Vistaprint North American Services Corp. / VistaPrint Technologies Ltd, FA1686496 (Forum Sep. 12, 2016) (finding common control in part because the WHOIS records listed the “same registrar information”); Kurk Wasserman Consulting, L.L.C. v. Sunny Lee / gino yu, FA1684505 (Forum Aug. 25, 2016) (finding common control in part because the domains “use the same registrar”).
For all these reasons, the Panel finds that the disputed domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all the disputed domain names, and the registrants are collectively referred to as “Respondent”.
Preliminary Issue: Language of Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, Respondent has received the Commencement Notification in Chinese and has chosen not to respond to the Complaint. All of the disputed domain names are composed of English language terms and each resolves to a website that is entirely in English. Thus the Respondent understands and is comfortable conducting business in English. Consequently, pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states is one of the world's leading integrated energy companies with a global workforce of over 50,000 company employees and 3,500 service station employees. It maintains a significant presence in North America, with its world headquarters in California. Complainant 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 (gasoline and diesel) and lubricants; manufacturing and sale of petrochemical products; generation of power and production of geothermal energy; providing energy efficiency solutions; offering credit card services; and development of future energy resources, including research for advanced biofuels. Complainant has rights in the CHEVRON and TEXACO marks based upon registration in the United States in, respectively, 1939 and 1906. The marks are registered elsewhere around the world. The mark TEXACO is famous.
Complainant alleges that the disputed domain names are confusingly similar to its CHEVRON and TEXACO marks since they each incorporate both marks (or an intentional misspelling of the mark), merely adding the generic term “card” or “business card” (or an intentional misspelling of those terms) and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s CHEVRON or TEXACO marks. Additionally, Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect users to pages displaying third-party links. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain by hosting click-through links. Further, Respondent had actual knowledge of Complainant’s rights in the CHEVRON and TEXACO marks. Finally, Respondent has engaged in a pattern of bad faith registration and use. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the marks CHEVRON and TEXACO dating back to, respectively, 1939 and 1906.
The disputed domain names were registered in 2019 and 2020.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving websites display advertising links to products and services that compete with those of Complainant. The resolving websites display Complainant’s marks. Respondent has engaged in a pattern of bad faith registration and use.
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 disputed domain names each incorporate both of Complainant’s marks, (or an intentional misspelling of the mark), merely adding the generic term “card” or “business card” (or an intentional misspelling of those terms) and the “.com” generic top-level domain (“gTLD”). The addition of a generic term and a gTLD to a mark is insufficient to distinguish a disputed domain name from that mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Additionally, misspelling a mark or additional term is generally insufficient to overcome confusing similarity. See Wells Fargo & Company v. VALERIE CARRINGTON, FA 1621718 (Forum July 2, 2015) (finding that the <wllsfago.com> domain name is confusingly similar to the WELLS FARGO mark as the domain name merely omits the “e” and “r” from the mark while adding the “.com” gTLD suffix.). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record lists the registrants as “Zhichao Yang” and “leed johnny”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names to redirect users to pages displaying competing third-party links. Specifically, Complainant provides evidence showing that each of the disputed domain names resolves to a page of links with titles relating to Complainant’s business such as “Gas Credit Card,” “Chevron Gas Station,” and “Chevron Texaco Credit Card.” Use of a disputed domain name to redirect users to a page of commercial hyperlinks is not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Consequently, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s 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 names.
Indeed, as already noted, Respondent disrupts Complainant’s business and attracts users for commercial gain by hosting click-through links to competing products and services. Use of a disputed domain name to host click-through links may evidence bad faith disruption of business under Policy ¶ 4(b)(iii) or attraction for commercial gain under Policy ¶ 4(b)(iv), especially when the links compete with the Complainant. See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶¶ 4(b(iii) and/or (iv).
Further, Complainant presents evidence showing that Respondent has engaged in pattern of bad faith registration. Indeed, the instant proceeding itself displays a pattern of bad faith registration of disputed domain names containing Complainant’s CHEVRON and TEXACO marks. Registration of multiple domain names containing a complainant’s mark, as well as prior adverse UDRP decisions, can substantiate an argument that a respondent registered and uses a disputed domain name in bad faith per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Thus the Panel finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: seven of the resolving websites display “Chevron Texaco Credit Card” or “Chevron Gas Card”, thus Respondent knew of Complainant’s marks. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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 Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under 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 <chevrontaxacocards.com>, <chevronteacocards.com>, <chevrontexacocads.com>, <chevrontexacocars.com>, <chevrontexacocrds.com>, <chevrontexaocards.com>, <chevrontxacocards.com>, and <chevrontexacobusinescard.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 24, 2020
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