Exxon Mobil Corporation v. Li Ming
Claim Number: FA0910001288564
Complainant is Exxon
Mobil Corporation (“Complainant”), represented by Leanne Stendell, of Haynes and Boone, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <exxonmobilcards.com>, registered with Directnic, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
.Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2009.
On October 9, 2009, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <exxonmobilcards.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, 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 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 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@exxonmobilcards.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On .November 6, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed .Tyrus R. Atkinson, Jr., 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 <exxonmobilcards.com> domain name is confusingly similar to Complainant’s EXXONMOBIL mark.
2. Respondent does not have any rights or legitimate interests in the <exxonmobilcards.com> domain name.
3. Respondent registered and used the <exxonmobilcards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, is the owner of multiple registrations for the EXXONMOBIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,510,978 issued November 20, 2001) and the China Patent and Trademark Office (“CPTO”) (e.g., Reg. No. 1,463,739 issued October 21, 2000). Complainant uses its EXXONMOBIL mark in the marketing, sales, and distribution of petroleum and chemical products. Complainant also offers credit card services in connection with the provision of goods and services.
Respondent, Li Ming, registered the <exxonmobilcards.com> domain name on February 9, 2009. The disputed domain name resolves to a website entitled “exxonmobilcards.com” featuring click-through advertisement links that further resolve to the websites of Complainant’s competitors in the credit card services industry.
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.
The Panel finds Complainant has established rights in the EXXONMOBIL mark pursuant to Policy ¶ 4(a)(i) through the multiple registrations of the mark with the USPTO (e.g., Reg. No. 2,510,978 issued November 20, 2001) and the CPTO (e.g., Reg. No. 1,463,739 issued October 21, 2000). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <exxonmobilcards.com> domain name is confusingly similar to its EXXONMOBIL mark because it incorporates the mark in its entirety with the mere addition of the descriptive term “cards” and the affixation of the generic top-level domain “.com.” The Panel finds that the addition of the term “cards” fails to sufficiently distinguish the disputed domain name from Complainant’s mark especially because Complainant offers credit card services under the EXXONMOBIL mark; this may in fact increase the degree of confusing similarity between the two. Therefore, the Panel concludes that Respondent’s <exxonmobilcards.com> domain name is confusingly similar to Complainant’s EXXONMOBIL mark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. 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 Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <exxonmobilcards.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds in this case that Complainant has established a prima facie case. Respondent has failed to submit a response to these proceedings; however, the Panel will examine the record in consideration of Respondent’s potential rights and legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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).”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names using the EXXONMOBIL mark. The WHOIS information identifies the registrant of the disputed domain name as “Li Ming.” This information suggests that Respondent is not commonly known by the disputed domain name and there is no evidence in the record to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the <exxonmobilcards.com> domain name
to attract Internet users to its website containing links to third-party
websites, some of which directly compete with Complainant in the credit card
services industry. The Panel finds that Respondent’s diversion of
Internet users to a competing website through the use of a confusingly similar
disputed domain name does not constitute a bona fide offering of goods
and services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum
Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com>
domain name to redirect Internet users to a website featuring links to travel
services that competed with the complainant was not 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)); see also Glaxo Group
Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not
using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii)
because the respondent used the domain name to take advantage of the
complainant's mark by diverting Internet users to a competing commercial
site).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
contends that Respondent’s use of the <exxonmobilcards.com>
domain name, which was registered on February 9, 2009, to display sponsored links
for Complainant’s competitors is further evidence of bad faith under Policy ¶
4(b)(iii). The Panel finds that Respondent’s use of the disputed domain
name constitutes a disruption to Complainant’s business and thus, Respondent
had engaged in bad faith registration and use pursuant to Policy ¶
4(b)(iii). See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further alleges that Respondent is using the <exxonmobilcards.com> domain name to intentionally attract Internet users to its website by creating a likelihood of confusion with Complainant’s EXXONMOBIL mark. The Panel infers that Respondent receives click-through fees for diverting Internet users to the websites of Complainant’s competitors. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds that such use of the disputed domain name constitutes bad faith registration and use. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonmobilcards.com> domain name be TRANSFERRED from Respondent to Complainant.
.Tyrus R. Atkinson, Jr., Panelist
Dated: .November 20, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum