Chevron Intellectual Property LLC v. Milen Radumilo
Claim Number: FA2012001924082
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevrontexaco.co>, registered with Dynadot, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2020; the Forum received payment on December 7, 2020.
On December 9, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <chevrontexaco.co> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 December 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@chevrontexaco.co. Also, on December 15, 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 January 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 a global energy and oil company. Complainant has rights in the CHEVRON and TEXACO marks through its registrations of the marks with numerous trademark agencies throughout the world. (e.g. CHEVRON, United States Patent and Trademark Office (“USPTO”) Reg. 364,683, registered Feb. 14, 1939; TEXACO, USPTO Reg. 794,947, registered Aug. 24, 1965), and other registration’s throughout the world. Respondent’s <chevrontexaco.co> domain name, registered October 11, 2020, is identical or confusingly similar to Complainant’s marks as it incorporates the marks in their entirety and adds the “.co” country code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the <chevrontexaco.co> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its CHEVRON and TEXACO marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or use, but instead attempts to divert internet users to the disputed domain name’s resolving website, where Respondent hosts a series of rotating subdomains with competing hyperlinks, and possibly malware.
Respondent registered and uses the <chevrontexaco.co> domain name in bad faith. Specifically, Respondent offers the disputed domain name for sale. Next, Respondent has engaged in a pattern of bad faith registration. Additionally, Respondent disrupts Complainant’s business for commercial gain by hosting a series of rotating subdomains with competing hyperlinks, and possibly malware. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHEVRON and TEXACO marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <chevrontexaco.co> domain name.
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 rights in the CHEVRON and TEXACO marks through its registrations of the marks with numerous trademark agencies throughout the world. (e.g. CHEVRON, USPTO Reg. 364,683, registered Feb. 14, 1939; TEXACO, USPTO Reg. 794,947, registered Aug. 24, 1965), and other registration’s throughout the world. Registration with multiple trademark agencies, including the USPTO, is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). The Panel finds that Complainant has rights the marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <chevrontexaco.co> domain name is confusingly similar to Complainant’s CHEVRON and TEXACO marks. Adding a ccTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). The disputed domain name incorporates Complainant’s CHEVRON and TEXACO marks in their entirety and adds the “.co” ccTLD to the end of the marks. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 finds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the <chevrontexaco.co> domain name, nor has Complainant authorized or licensed Respondent to use its CHEVRON or TEXACO marks in the disputed domain name. Where a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS of record identifies Respondent as “Milen Radumilo”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed respondent to use its CHEVRON and TEXACO marks in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <chevrontexaco.co> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host a series of rotating resolving websites that may distribute malware and feature competitive pay-per-click links and offers the domain for sale is generally not considered a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum, Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Complainant provides screenshots of the disputed domain name’s resolving websites, which appear to rotate between several subdomains with competing pay-per-click links and websites with links offering the disputed domain names for sale. Complainant claims the rotating series of websites may be used to distribute malware. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interest in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <chevrontexaco.co> domain name in bad faith by offering the domain name for sale. Under Policy ¶ 4(b)(i), where a Respondent has offered a domain name for sale to the public, past panels have found bad faith registration and use where Respondent also intended to offer the domain name for sale. See Gen. Elec. Co. v. FORDDIRECT.COM, INC., D2000-0394 (WIPO June 22, 2000) (finding that the respondent registered and used the domain name in bad faith by using the domain name to direct users to a general site offering the domain name for sale). Complainant’s screenshots of one of the subdomain’s resolving websites, which offers the disputed domain name for sale. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant argues that Respondent has engaged in a pattern of bad faith registration and use of disputed domain names. Under Policy ¶ 4(b)(ii), evidence of previous UDRP cases transferring a disputed domain name from a Respondent’s possession may be evidence of a pattern of bad faith. See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Complainant provides lists of numerous cases resulting in domain names being transferred from Respondent. The Panel finds that Respondent has engaged in a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant argues that Respondent disrupts Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), attempting to pass off as a Complainant with an identical or confusingly similar domain name and diverting internet users to a rotating series of domain names which may install malware or offer competing pay-per-click links may be considered bad faith disruption for commercial gain. See Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum, Oct, 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); 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.”). The disputed domain has a rotating series of subdomain resolving websites, some of which feature competing pay-per-click links. This is evidence that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <chevrontexcaocreditcards.com> domain name in bad faith as it had actual knowledge of Complainant’s rights in the CHEVRON and TEXACO marks at the time of registration. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient to support a finding of bad faith, and may be demonstrated by registering a disputed domain name that incorporates well known and registered marks, as well as Respondent’s use of the disputed domain name’s resolving website. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant also provides numerous sources that demonstrate the notoriety and recognition of its marks. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <chevrontexaco.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
January 11, 2021
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