Chevron Intellectual Property LLC v. cheng shou zhang
Claim Number: FA2105001945661
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway of DICKINSON WRIGHT PLLC, District of Columbia, USA. Respondent is cheng shou zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevronpetro.com>, registered with Cloud Yuqu 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2021; the Forum received payment on May 19, 2021. The Complaint was received in English.
On May 21, 2021, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <chevronpetro.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 May 27, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of June 16, 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@chevronpetro.com. Also on May 27, 2021, the Chinese 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 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In favor of its request, the Panel notes that the disputed domain name is comprised, in large part, of the CHEVRON mark followed by the word “petro” both of which are terms with meaning in the English language. Further, Complainant notes that “the Domain Name resolves to a website that is entirely in English”. Finally, the Forum has provided notice of this case to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In light of the above-mentioned circumstances and the delay and further expense that would be caused from requiring that Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.
A. Complainant
Complainant is one of the world's leading integrated energy companies and is active in all facets of the global energy industry. Complainant has rights in the famous CHEVRON mark through its use in commerce since 1935 and its registrations with various national and regional trademark authorities such as the United States Patent and Trademark Office (“USPTO”) dating back to 1939. Respondent’s <chevronpetro.com> domain name, registered on April 12, 2020, is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the descritive term “petro” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <chevronpetro.com> domain name as it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its CHEVRON mark in any manner. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make any legitimate noncommercial or fair use thereof, but instead passes itself off as Complainant by reproducing Complainant’s own <chevron.com> website content.
Respondent registered and uses the <chevronpetro.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing itself off as Complainant. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHEVRON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 and evidence 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 and supported 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 mark through its registrations with the USPTO and other national and regional trademark authorities. Registration with the USPTO is generally suffiicent in demonstrating rights in a mark under Policy ¶ 4(a)(i). See ArcelorMittal (Société Anonyme) v. Milen Radumilo, FA 1947599 (Forum June 22, 2021) ("Complainant’s ownership of a USPTO trademark registration for ARCELORMITTAL, as well as other registrations worldwide, demonstrates Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(I).”). Complainant submits into evidence copies of a number of its USPTO registration certificates. Therefore, the Panel finds that Complainant has rights in the CHEVRON mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <chevronpetro.com> domain name is identical or confusingly similar to Complainant’s CHEVRON mark. Under Policy ¶ 4(a)(i), adding a generic word along with the “.com” gTLD is generally insufficient to differentiate a disputed domain name from the mark it fully incorporates. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The disputed domain name incorporates Complainant’s CHEVRON mark in its entirety and adds the term “petro” which, according to a dictionary screenshot submitted by Complainant, means “of or relating to petroleum or the petroleum industry.” Respondent also uses the “.com” gTLD which does not add any unique meaning or distinctiveness to the totality of the disputed domain name. Therefore, the Panel agrees finds that Respondent’s <chevronpetro.com> domain name is confusingly similar to Complainant’s CHEVRON mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent is not commonly known by the <chevronpetro.com> domain name, nor has Complainant authorized or licensed Respondent to use its CHEVRON mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may support an assertion that a Respondent is not commonly known by the disputed domain name and a lack of evidence demonstrating otherwise may affirm a complainant’s contention that it never authorized or licensed a respondent to use its mark in the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The WHOIS record for the <chevronpetro.com> domain name, as revealed by the concerned Registrar, identifies Respondent as “cheng shou zhang”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its CHEVRON mark in the disputed domain name. Respondent has not filed a Response or made any other submission in this case and so it does not dispute Complainant’s assertion. Therefore, the Panel finds nothing to indicate that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <chevronpetro.com> domain name for any bona fide offering of goods or services, and that it does not make any legitimate noncommercial or fair use thereof, but instead seeks to pass itself off as Complainant, possibly in furtherance of a phishing or other nefarious scheme. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to impersonate a Complainant, be it for commercial gain or phishing, is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, as well as a copy of the website’s HTML code, which shows that the page uses an inline frame to copy and display certain content from Complainant’s own <chevron.com> website including a link to its 2020 annual report, a link to certain press releases, and an invitation to sign up for a newsletter. Complainant argues, and submits journal articles which note that websites using inline framing usually engage in practices such as clickjacking[i]. As Complainant has made a prima facie case and Respondent has not participated in these proceedings to rebut the same, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services and that it does not make any legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered the <chevronpetro.com> domain name with actual knowledge of Complainant’s rights in the CHEVRON mark. Under Policy ¶ 4(a)(iii), actual knowledge may form a foundation upon which to build an assertion of bad faith, and may be evidenced by a respondent’s incorporation of a well-known mark into a disputed domain name, as well as use of a complainant’s own content in the disputed domain name’s resolving website. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA 1596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Here, Complainant has submitted screenshots of its website and its annual report to demonstrate that its CHEVRON mark is well known. It also provides copies of promotional materials that are specifically directed to the Chinese market, the location noted in Respondent’s WHOIS record. More telling however, the disputed domain name incorporates Complainant’s CHEVRON mark in its entirety and the resolving website uses an inline frame to copy content from Complainant’s own website. Based on this evidence, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHEVRON mark.
Next, Complainant argues that Respondent registered and uses the <chevronpetro.com> domain name for bad faith disruption of Complainant’s business and to attract users to its website for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass oneself off as a complainant, whether for monetary gain or other nefarious purposes such as phishing, is considered evidence of bad faith registration and use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding that the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant’s submitted screenshots of Respondent’s website show that it uses an inline frame to copy portions of Complainant’s own <chevron.com> website, including an invitation for users to sign up for a newsletter. Complainant argues that Respondent may use this website to engage in clickjacking, phishing, or other nefarious activity and notes that the email address listed in the WHOIS record for the disputed domain name is used by a Chinese auto parts company. Respondent has not participated in this case and so it does not dispute Complainant’s evidence or argument. Based upon a preponderance of the evidence, the Panel finds it more likely than not that Respondent registered and uses the disputed domain name for bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronpetro.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 23, 2021
[i] Complainant submits a copy of an article that describes clickjacking as “the practice of overlaying malicious content over a trusted website in an effort to dupe unsuspecting Internet users into downloading malware or to engage unknowingly in other malicious or harmful activities.”
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