Exxon Mobil Corporation v. Wesley Perkins
Claim Number: FA1012001363400
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is Wesley Perkins (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mobilsuper.com>, registered with Moniker Online Services Inc.
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 December 14, 2010; the National Arbitration Forum received payment on December 14, 2010.
On December 15, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <mobilsuper.com> domain name is registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker 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 December 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2011 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@mobilsuper.com. Also on December 15, 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 January 10, 2011, 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" 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 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 <mobilsuper.com> domain name is confusingly similar to Complainant’s MOBIL mark.
2. Respondent does not have any rights or legitimate interests in the <mobilsuper.com> domain name.
3. Respondent registered and used the <mobilsuper.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, is a global petrochemical company that owns multiple federal trademark registrations in its MOBIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 337,002 issued July 28, 1936). Complainant uses this mark in support of its business activities.
Respondent, Wesley Perkins, registered the disputed domain name on January 5, 2007. The disputed domain name resolves to a website offering adult-oriented materials.
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 contends that it has established rights in the MOBIL mark via registration with a federal trademark authority. Previous panels have found that registration with a federal trademark authority will establish a complainant’s rights in a given mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Thus, the Panel finds that Complainant has established its rights in the mark via trademark registration with the USPTO (e.g., Reg. No. 337,002 issued July 28, 1936) according to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <mobilsuper.com> domain name is confusingly similar to Complainant’s MOBIL mark. The disputed domain name incorporates the entire mark while adding the generic term “super” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain name from Complainant’s mark by merely adding a generic term and a gTLD to Complainant’s MOBIL mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel concludes that Respondent’s <mobilsuper.com> domain name is confusingly similar to Complainant’s MOBIL mark according to Policy ¶ 4(a)(i).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been met.
The Panel finds that Complainant has met its burden of proof by making a prima facie case against Respondent. Previous panels have found that the burden shifts to Respondent to prove that it has rights or legitimate interests in a mark when Complainant meets its prima facie burden. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). When Respondent failed to submit an answer to the initial complaint the Panel may assume that it lacks rights or legitimate interests in the <mobilsuper.com> domain name. 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.”). However, the Panel will examine the entire record to determine if Respondent retains rights of legimate interests in the disputed domain name according to the factors included in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <mobilsuper.com> domain name. Respondent has brought forth no evidence to rebut this assertion. The WHOIS information identifies the registrant of the disputed domain name as “Wesley Perkins,” which is dissimilar in nature from the <mobilsuper.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant also asserts that Respondent is not engaging in the bona fide offering of goods or services or making a legitimate noncommerical or fair use of the <mobilsuper.com> domain name. Respondent’s disputed domain name redirects to a site offering adult-oriented material. The Panel finds that Respondent’s use of the confusingly similar domain name to redirect users to an adult-oriented site does not constitute a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <mobilsuper.com> domain name pursuant to Policy ¶ 4 (c)(i) and Policy ¶ 4 (c)(iii) respectively. See McClatchy Mgmt. Servs., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that the respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Complainant asserts that Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv) due to the fact that Respondent presumably receives revenue for hosting it’s adult-oriented website. The Panel finds Respondent’s use of the <mobilsuper.com> domain name for its own pecuniary gain to be affirmative evidence of bad faith registration and use according to 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); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Respondent’s <mobilsuper.com> domain name resolves to site offering adult-oriented services and showing adult-oriented materials. Previous panels have found this to be sufficient in finding bad faith registration and use of the part of the registrant, in this case Respondent. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a pornographic website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a[n] [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). Therefore, the Panel finds that Respondent registered and used the <mobilsuper.com> domain name in bad faith according to Policy ¶ 4(a)(iii).
The Panel finds that the requirements of Policy ¶ 4 (a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mobilsuper.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: January 24, 2011
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