Marathon Petroleum Company LP v. Sun Poil
Claim Number: FA2111001974168
Complainant is Marathon Petroleum Company LP (“Complainant”), represented by Carla H. Clements of Womble Bond Dickinson (US) LLP, North Carolina, USA. Respondent is Sun Poil (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <marathonpetoleum.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 22, 2021; the Forum received payment on November 22, 2021.
On November 22, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <marathonpetoleum.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 2021 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@marathonpetoleum.com. Also on November 23, 2021, 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 December 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the MARATHON trademark and service mark established by its ownership of the portfolio of registrations described below an extensive use of the mark by itself and its predecessors in title in commerce since 1914.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s MARATHON mark as it includes the entirety of its MARATHON mark.
Complainant further argues that the disputed domain name includes a common typographic error, merely removing the “r” from the word “petroleum” which is used in Complainant’s Trade Name and domain name.
Complainant submits that it is well-settled that domain names containing misspellings of another’s trademark, as is the case here, are confusingly similar to the complainant’s trademark. See Landry’s Rests., Inc. v. Landrys Rests. Inc., FA 506524 (Forum Aug. 11, 2005) (ordering transfer of typosquatted domain names of complainant’s JOE’S CRAB SHACK, LANDRY’S and RAINFOREST CAFE marks).
Complainant adds that the generic Top-Level Domain (“gTLD”) extension <.com> does not avoid a finding of confusing similarity because it has been held by a number of panels applying the Policy that the addition of a Top-Level Domain, such as <.com>, <.net>, or <.org>, to a trademark does not sufficiently differentiate the resulting domain name from the trademark in issue. See VAT Holdings AG v. Vat.com, D2000-0607 (WIPO Aug. 22, 2000) (“The Panel applies the principle that in assessing identity, the portion ‘.com’ of the Domain Name is to be ignored and the comparison is to be with the characterizing part. This has been a principle applied in many prior decisions under the ICANN policy.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant’s rights were established long before the disputed domain name was registered.
Furthermore, Complainant asserts that Respondent is not a subsidiary, affiliate, licensee of Complainant, nor is Respondent and agent of, or controlled by Complainant.
Complainant further contends that Respondent has no legitimate reason using Complainant’s MARATHON mark other than mislead and to defraud.
Referring to redacted copies of emails exhibited in an annex to the Complaint, Complainant argues that they appear to show that Respondent is using the disputed domain name to pass itself off as Complainant to phish for information and payment from suppliers of Complainant.
Complainant contends that it is well established that use of a domain name to perpetrate a fraud is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under ¶ 4(c) of the Policy. See, e.g., Blackhawk Network, Inc. v. Brandon, FA 1633237 (Forum Sept. 14, 2015) (respondent had no legitimate rights where respondent used domain name to direct visitors to respondent’s fraudulent website).
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant submits that no plausible explanation exists as to why Respondent registered the disputed domain name, which incorporates Complainant’s mark in its entirety, other than to trade on the goodwill of Complainant.
Complainant furthermore submits that the evidence shows that it appears that Respondent is using the disputed domain name as an email address to perpetrate fraud.
In support of this allegation, Complainant refers to the abovementioned redacted copies of emails exhibited in an annex to the Complaint. The emails appear to be correspondence between a person using the disputed domain name as an email address and a third party in which the sender of the emails is impersonating Complainant requesting payment on overdue invoices. The exhibited email correspondence shows that the sender of the emails uses Complainant’s MARATHON mark and Complainant’s company address in the email signature block.
Complainant argues that such use of Complainant’s MARATHON mark strongly indicates that Respondent had actual knowledge of Complainant’s MARATHON mark prior to registration of the disputed domain name.
Complainant adds that bad faith registration and use is proven by the fact that Respondent has selected a domain name containing a slight misspelling of Complainant’s domain name and trade name in an attempt to take advantage of common typographical errors (typosquatting) with intent to profit from the goodwill Complainant has developed in its trademark. See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting . . . is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a wholesaler and retailer of fuels, vehicle service station and gas station services with a product range that includes oil; greases; fluids; lubricants; gasoline; fuels; asphalt; aromatic hydrocarbons; anti-freeze; storage, transportation, delivery and distribution of oil, gas and gases via tanks, terminals, pipeline, truck, train and marine vessels on which it uses the MARATHON mark.
Complainant owns a large portfolio of trademark registrations in the United States and elsewhere for the MARATHON trademark and similar trademarks including the following which are among the most relevant for the purposes of this Complaint:
· United States registered service mark MARATHON, registration number 4,167,002, registered on the Principal Register, on July 3, 2012 for services in international class 39;
· United States registered service mark MARATHON, registration number 4,167,003, registered on the Principal Register, on July 3, 2012 for services in international class 40;
· United States registered service mark MARATHON, registration number 5,323,469, registered on the Principal Register, on Oct. 31, 2017 for services in international class 35;
· United States registered service mark MARATHON, registration number 6,029,000 registered on the Principal Register, on April 7, 2020 for services in international class 35.
Complainant established Internet presence and a website at <marathonpetroleum.com>.
The disputed domain name <marathonpetoleum.com> was registered on October 18, 2021, the details of the registrant are redacted for privacy on the published WHOIS.
There is no information available about Respondent, except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name, in the course of this proceeding.
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 has provided convincing and uncontested evidence of its ownership of the MARATHON mark established through its portfolio of trademark and service mark registrations described above.
The disputed domain name consists of the word “marathon”, the letters “petroleum” and the generic Top-Level Domain extension <.com>.
The initial, dominant, and only distinctive element in the disputed domain name is Complainant’s MARATHON mark. The element “petoleum” has no apparent meaning other than as a misspelling of the word “petroleum”, which is among the products sold by Complainant, and an element in Complainant’s corporate name.
In the context of this Complaint, the generic Top-Level Domain extension <.com> may be ignored for the purposes of comparing the disputed domain name and Complainant’s mark because Internet users are likely to consider it to be necessary technical element of a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the MARATHON mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Complainant’s rights were established long before the disputed domain name was registered;
· Respondent is not a subsidiary, affiliate, licensee of Complainant, nor is Respondent and agent of, or controlled by Complainant;
· Respondent has no legitimate reason using Complainant’s MARATHON mark other than mislead and to defraud;
· exhibited email correspondence annexed to the Complaint, show that Respondent is using the disputed domain name to pass itself off as Complainant to phish for information and payment from suppliers of Complainant,
· the exhibited correspondence shows requests from a person impersonating Complainant, using the disputed domain name as an email address, sending emails to a third-party, requesting payment of invoices which are overdue.
· such use of use of a domain name to perpetrate a fraud is not a bona fide offering of goods or services or a legitimate noncommercial or fair use
It is well established that once our complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence shows that the disputed domain name was registered long after Complainant acquired its rights in the MARATHON mark. The disputed domain name is a combination of Complainant’s MARATHON mark and misspelling of the word “petroleum”. Taken together these two elements are clear reference to Complainant, its name, trademark and service mark, business, and the Internet domain name which it uses as the address of its website.
It is implausible that the registrant of the disputed domain name had any intention other than to target and take predatory advantage of Complainant and its reputation and goodwill in its name and mark.
This Panel finds therefore that, on the balance of probabilities, the disputed domain name was registered in bad faith.
Complainant has adduced in evidence copies of emails which it avers is correspondence from a person using the disputed domain name sent to third party, requesting payment of overdue accounts. Complainant does not give very much detail about this and the correspondence is redacted. A better explanation of the context would have been helpful. However, as Complainant’s allegation that the email correspondence was sent to one of tis suppliers, has not been denied by Respondent, this Panel finds that on the balance of probabilities the disputed domain name is being used in bad faith to impersonate Complainant for the purposes requesting payment of invoices third parties.
In making these findings of registration and use in bad faith, this Panel has taken into account the fact that incorporation of the misspelled element “petoleum” in the disputed domain name is intended to confuse Internet users and is therefore evidence of typosquatting.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in 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 <marathonpetoleum.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 22, 2021
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