Exxon Mobil Corporation v. mga enterprises limited
Claim Number: FA0907001273445
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne
Stendell, of Haynes and Boone, LLP,
REGISTRAR
The domain name at issue is <exxontravelclub.com>, registered with Godaddy.com, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On July 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 2009 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@exxontravelclub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <exxontravelclub.com> domain name is confusingly similar to Complainant’s EXXON mark.
2. Respondent does not have any rights or legitimate interests in the <exxontravelclub.com> domain name.
3. Respondent registered and used the <exxontravelclub.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, is a multinational petroleum company. In addition to its oil activities, Complainant has offered through one of its subsidiaries automobile club and emergency roadside assistance programs. Complainant owns a number of trademark registrations for the EXXON mark around the world, including a registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 902,044 issued November 10, 1970).
Respondent registered <exxontravelclub.com> domain name on
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others, and has been ordered by
previous UDRP panels to transfer the disputed domain names to the respective
complainants. E.g., Lauth Group Inc. v.
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 a trademark registration with the USPTO for
the EXXON mark (Reg. No. 902,044 issued November 10, 1970). The Panel finds that Complainant has
established rights in the EXXON mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Complainant argues that
Respondent’s <exxontravelclub.com> domain name is confusingly
similar to Complainant’s EXXON mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name, which was
registered on
Therefore, the Panel finds that Respondent’s <exxontravelclub.com> domain name is confusingly similar to Complainant’s EXXON mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and
legitimate interests in the <exxontravelclub.com>
domain
name. If Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that its rights and
legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case. See
Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270
(WIPO June 6, 2000) (“
Therefore, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel will inspect the record and determine whether there is evidence against Complainant’s allegations under Policy ¶ 4(c).
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain name.
Respondent’s WHOIS information identifies Respondent as “mga enterprises
limited.” The Panel finds that the WHOIS
information demonstrates that Respondent is not commonly known by the disputed
domain name. Therefore, pursuant to
Policy ¶ 4(c)(ii), Respondent lacks rights and legitimate interests in the <exxontravelclub.com>
domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. 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).
Respondent is using the <exxontravelclub.com>
domain name to display links advertising third-party websites, some of which
are in competition with Complainant’s offering of automobile club and emergency
roadside assistance services. The Panel
infers that Respondent is using the disputed domain name to earn click-through
fees, and thus finds that Respondent has not made 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 Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has provided evidence that Respondent has a
history of registering domain names infringing upon the trademark rights of
others, and has been ordered by previous UDRP panels to transfer the disputed
domain names to the respective complainants.
E.g., Lauth Group Inc. v.
The Panel finds that Respondent’s use of the <exxontravelclub.com> domain name to disrupt the business of Complainant by offering links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Lastly, Respondent is using the <exxontravelclub.com> domain name to intentionally divert Internet users to
the associated websites, which display third-party links to competing websites. In cases such as this, the Panel presumes
that Respondent is collecting click-through fees and attempting to profit by
creating a likelihood of confusion between Complainant’s EXXON mark and the confusingly
similar <exxontravelclub.com> domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb.
Forum Mar. 21, 2006) (“Respondent is
using the disputed domain name to operate a website which features links to
competing and non-competing commercial websites from which Respondent
presumably receives referral fees. Such
use for Respondent’s own commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”).
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 <exxontravelclub.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: August 26, 2009
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