Exxon Mobil Corporation v. Exxon Mobil Emirates
Claim Number: FA1007001336924
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 <exxonmobil-emirates.com>, registered with OnlineNIC, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 22, 2010.
On July 30, 2010, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonmobil-emirates.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 2010 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@exxonmobil-emirates.com by e-mail. Also on August 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 a Written Notice, as defined in Rule 1. 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. The domain name that Respondent registered, <exxonmobil-emirates.com>, is confusingly similar to Complainant’s EXXONMOBIL mark.
2. Respondent has no rights to or legitimate interests in the <exxonmobil-emirates.com> domain name.
3. Respondent registered and used the <exxonmobil-emirates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, markets, sells, and
distributes petroleum and chemical products and services. Complainant holds numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the EXXONMOBIL mark (e.g., Reg. No. 2,510,978 issued
November 20, 2001) as well as trademark registration with the United Arab
Emirates Ministry of Economy & Commerce (e.g., Reg. No. 45,469 issued March
2, 2004).
Respondent, Exxon Mobil Emirates, registered the <exxonmobil-emirates.com> domain name July 21, 2009. The disputed domain name resolves to a website that prominently displays Complainant’s EXXONMOBIL mark and purports to offer counterfeit versions of Complainant’s products.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 asserts rights in the EXXONMOBIL mark through its numerous trademark registrations of the mark with the USPTO (e.g., Reg. No. 2,510,978 issued November 20, 2001) as well as the United Arab Emirates Ministry of Economy & Commerce (e.g., Reg. No. 45,469 issued March 2, 2004). The Panel finds that these trademark registrations establish Complainant’s rights in the EXXONMOBIL mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant alleges that Respondent’s <exxonmobil-emirates.com>
domain name is confusingly similar to its EXXONMOBIL mark. Respondent fully incorporates Complainant’s
mark in the disputed domain name.
Respondent then attaches a hyphen and the geographic term “emirates” to
Complainant’s mark. Finally, Respondent
affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in
the disputed domain name. The Panel finds that these additions do not render
Respondent’s domain name distinct from Complainant’s mark. See Health Devices Corp. v.
Therefore, the Panel finds that Respondent’s <exxonmobil-emirates.com> domain name is confusingly similar Complainant’s EXXONMOBIL mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
After Complainant makes a prima facie case establishing that Respondent has no rights or legitimate interests in the <exxonmobil-emirates.com> domain name, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Although the Panel may make an inference that Respondent lacks rights and legitimate interests based on Respondent’s failure to submit a Response in this proceeding, the Panel still examines the record to determine whether Respondent has rights or legitimate interests under a Policy ¶ 4(c) analysis. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant claims it has never consented to, licensed, or
otherwise authorized Respondent to use its EXXONMOBIL mark in a domain
name. Although the WHOIS information
lists “Exxon Mobil Emirates” as the registrant and that name is part of the <exxonmobil-emirates.com>
domain name, the Panel may find that Respondent is not actually known by the
disputed domain name. Therefore, based
on Complainant’s assertions and the record as a whole, the Panel finds that Respondent
is not commonly known by the <exxonmobil-emirates.com> domain name
pursuant to Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent’s <exxonmobil-emirates.com>
domain name resolves to a website that purports to offer Complainant’s
products that actually are counterfeit versions. Screen shots of Respondent’s
resolving website show images of Complainant’s products with the captions
“Lubricants,” “Brake Fluid,” and “Anti Freeze.”
These screen shots also show Complainant’s EXXONMOBIL mark prominently
displayed throughout the site. The
Panel finds that Respondent uses the disputed domain name to sell counterfeit
goods, and thereby seeks to profit from the use of Complainant’s EXXONMOBIL mark.
Therefore, the Panel finds that this use does not qualify as a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Hewlett-Packard Co. v.
Inversiones HP Milenium
Furthermore, Complainant also claims that Respondent uses
the <exxonmobil-emirates.com> domain name to attempt to pass
itself off as Complainant’s official website.
As previously discussed, Respondent’s website features
Complainant’s mark, logo, and images of goods that closely resemble
Complainant’s products. The Panel
finds that Respondent’s efforts to pass itself off as Complainant constitutes further
evidence that Respondent lacks rights and legitimate interests in the disputed
domain name under a Policy ¶ 4(a)(ii) analysis. See Am. Int’l Group, Inc. v.
Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that
the respondent attempts to pass itself off as the complainant online, which is
blatant unauthorized use of the complainant’s mark and is evidence that the
respondent has no rights or legitimate interests in the disputed domain name);
see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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).”).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that the evidence establishes that the <exxonmobil-emirates.com> domain name reroutes Internet users seeking Complainant’s products to Respondent’s competing website. As a result, the Panel finds that the disputed domain name disrupts Complainant’s business, which supports findings of registration and use in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Additionally, Complainant asserts that Respondent uses the <exxonmobil-emirates.com>
domain name to create confusion as to Complainant’s sponsorship or
affiliation of the resolving website in order to sell counterfeit goods. The Panel agrees and, accordingly, finds that
this behavior provides further evidence to support findings of Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name]
to benefit from the goodwill associated with Complainant’s HP marks and us[ed]
the <hpdubai.com> domain name, in part, to provide products similar to
those of Complainant. Respondent’s practice
of diversion, motivated by commercial gain, constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv).”); see
also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the
website, offering Usag products, together with the domain name may create the
(incorrect) impression that Respondent is either the exclusive distributor or a
subsidiary of Complainant, or at the very least that Complainant has approved
its use of the domain name.”).
Finally, the Panel finds that Respondent’s use of the <exxonmobil-emirates.com> domain name to pass itself off as Complainant’s official website supports a finding of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <exxonmobil-emirates.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 6, 2010
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