Phillips 66 Company v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2105001944326
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goephillips66.com>, registered with Media Elite Holdings Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2021; the Forum received payment on May 8, 2021.
On May 12, 2021, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <goephillips66.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@goephillips66.com. Also on May 13, 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 June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Phillips 66 Company, is a multinational energy company engaged in the manufacture, marketing, distribution, and sale of high-quality petroleum products and services.
Complainant has rights in the PHILLIPS 66 mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”)
Respondent’s <goephillips66.com> domain name is confusingly similar to Complainant’s mark since it incorporates the mark in its entirety, adding only the letters “goe” and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <goephillips66.com> domain name as it is not commonly known by the at-issue domain name and Complainant has not licensed or authorized Respondent to use the PHILLIPS 66 mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, because Respondent has not used nor made any demonstrable preparation to use the domain name for any bona fide offering. Instead, Respondent’s domain name resolves to a website with a pop-up invitation for users to install an extension but appears to be intent on installing malware.
Respondent registered and uses the <goephillips66.com> domain name in bad faith because Respondent uses the domain name to confuse internet users and divert them to Respondent’s website, which may contain malware or software that is unaffiliated with Complainant. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the PHILLIPS 66 mark based on the marks fame and the fact Respondent’s domain name is nearly identical to Complainant’s domain name <go.ephillips66.com> which is used by Complainant’s employees.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PHILLIPS 66 trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in PHILLIPS 66 trademark.
Respondent uses the <goephillips66.com> domain name to address a pop-up invitation that ultimately appears to facilitate malware and offer pay-per-click software download links.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for PHILLIPS 66 demonstrates Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain name consists of Complainant’s PHILLIPS 66 trademark less its domain name impermissible space, prefixed with the generic term “geo” with all followed by the top level domain name “.com” to complete the domain name. The differences between the at-issue <goephillips66.com> domain name and Complainant’s PHILLIPS 66 trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Furthermore, Complainant owns and operates a website that is addressed by <go.ephillips66.com>. The near identity between one of Complainant’s active domain names and Respondent’s at-issue domain name only promotes confusion between Respondent’s domain name and Complainant’s mark. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <goephillips66.com> domain name is confusingly similar to Complainant’s PHILLIPS 66 trademark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also, Memoirs, Inc. v. Patel, FA 98244 (Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added). See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <goephillips66.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Domain Administrator / Fundacion Privacy Services LTD” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <goephillips66.com>domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Browsing to Respondent’s at-issue domain name returns a large pop-up “Continue” button and a message inviting users to click on it to install an extension. However, no such extension, or content, appears to be forthcoming after clicking the button. It thus seems more likely than not that Respondent’s is involved in distributing malware and/or collecting a commission each time an internet user goes through the motion of “downloading” the supposed extension. In any case, Respondent’s use of the at-issue domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”); see also, Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <goephillips66.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights and legitimate interests, Respondent appears to have registered and used the at-issue domain name to facilitate the installation of malware and/or to benefit from pay-per-click type fees. Using the confusingly similar domain name in this manner deceptively suggests an affiliation between Respondent and Complainant which does not exist and thus demonstrates Respondent’s bad faith pursuant Policy ¶ 4(b)(iv). Respondent’s intent to install malware and/or profit from pay-per-click links is yet more evidence of Respondent’s bad faith. See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see additionally Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Forum May 16, 2007) (concluding that internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Finally, Respondent had actual knowledge of Complainant’s rights in the PHILLIPS 66 mark when it registered and used the at-issue domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s PHILLIPS 66 trademark and from the fact that Respondent’s domain name is nearly identical to the <go.ephillips66.com> domain name that Complainant actively uses in conjunction with its business. Respondent’s registration and use of <go.ephillips66.com> with knowledge of Complainant’s trademark rights therein further indicates Respondent’s bad faith pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goephillips66.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 8, 2021
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