Chevron Intellectual Property LLC v. Domain Admin c/o Match Domains LLC
Claim Number: FA0709001080647
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Fred W. Hathaway, of Buchanan Ingersoll & Rooney PC, 1737 King Street Suite 500, Alexandria, VA 22314. Respondent is Domain Admin c/o Match Domains LLC (“Respondent”), Private 128 10000, DE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <chervontexacocards.com>, registered with Communigal Communications 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 20, 2007.
On September 25, 2007, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <chervontexacocards.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@chervontexacocards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <chervontexacocards.com> domain name is confusingly similar to Complainant’s CHEVRONTEXACO mark.
2. Respondent does not have any rights or legitimate interests in the <chervontexacocards.com> domain name.
3. Respondent registered and used the <chervontexacocards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Chevron Intellectual Property LLC, is a company that offers a wide range of products and services, including gasoline, lubricants, operating service stations, lubrication services, and offering credit card services. Complainant holds a variety of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for various marks, including one for the CHEVRONTEXACO mark (Reg. No. 2,729,246 issued June 24, 2003). Additionally, Complainant operates a website at the <chevrontexacocard.com> domain name.
Respondent registered the <chervontexacocards.com> domain name on October 13, 2004. Respondent’s disputed domain name resolves to a website that displays hyperlinks for various third-party websites, some of which are in direct competition with Complainant.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has asserted rights in the CHEVRONTEXACO mark through virtue of a trademark registration for the mark with the USPTO. The Panel finds that Complainant’s registration of this mark, which is prior to the registration of the disputed domain name, adequately establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Panel finds that Respondent’s <chervontexacocards.com> domain name is confusingly similar to Complainant’s CHEVRONTEXACO mark under Policy ¶ 4(a) as the disputed domain name consists of minor alterations to Complainant’s mark. The disputed domain name contains Complainant’s mark, and inverts two letters in the mark, the “v” and “r,” and adds the term “cards” to the end of the mark and the generic top-level domain (“gTLD”) “.com” to the mark. Inverting letters in the mark, adding a term which relates to an element of Complainant’s business, and adding a gTLD do not sufficiently render the <chervontexacocards.com> domain name distinct from Complainant’s mark under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a “well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case that Respondent lacks rights and legitimate interests in the <chervontexacocards.com> domain name. As Complainant has adequately satisfied that burden in this case, the Panel holds that the burden has shifted from Complainant to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
An examination of the evidence before the Panel shows that Respondent is not commonly known by the <chervontexacocards.com> domain name under the requirements of Policy ¶ 4(c)(ii). Respondent’s WHOIS information lists Respondent as “Domain Admin c/o Match Domains LLC,” and Complainant contends that Respondent is authorized to use its CHEVRONTEXACO mark in any way. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent is using the disputed domain name to operate a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. In Hale Products, Inc. v. Hart International Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because the respondent was diverting Internet users to the website of one of the complainant’s competitors. Respondent in the instant case is also diverting Internet users seeking Complainant’s services to the websites of Complainant’s competitors, among other websites. Respondent likely receives click-through fees for diverting consumers to these websites. Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
As discussed above, the Panel infers that Respondent is
commercially benefiting from its use of the <chervontexacocards.com>
domain name. Moreover, the inclusion of
a misspelled version of Complainant’s mark in the disputed domain name makes
the <chervontexacocards.com> domain name and the corresponding
website capable of creating a likelihood of confusion as to Complainant’s
source, sponsorship, affiliation and endorsement with both. The Panel therefore finds evidence of bad
faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting from
click-through fees); see also
Additionally, Respondent’s use of the <chervontexacocards.com>
domain name to display hyperlinks, some of which are in direct competition with
Complainant, constitutes a disruption of Complainant’s business under Policy ¶
4(b)(iii), and is further evidence of Respondent’s bad faith registration and
use of the <chervontexacocards.com> domain name. See Red Hat, Inc. v. Haecke,
FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a
commercial search engine with links to the products of the complainant and to
complainant’s competitors, as well as by diverting Internet users to several
other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat.
Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar
domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chervontexacocards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 14, 2007
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