Exxon Mobil Corporation v. newatlas / newatlas c/o salah elsokary / c/o EXXONMOBIL-EMIRATES.NET
Claim Number: FA1108001401904
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Leanne Stendell of Haynes and Boone, LLP, Texas, USA. Respondent is newatlas / newatlas c/o salah elsokary / c/o EXXONMOBIL-EMIRATES.NET (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <exxonmobil-emirates.org>, <exxonmobil-emirates.net>, <exxonmobillubricants.net>, <exxonmobillubricants.org>, and <exxonmobillub.com>, registered with Dotster, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2011; the National Arbitration Forum received payment on August 4, 2011.
On August 4, 2011, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <exxonmobil-emirates.org>, <exxonmobil-emirates.net>, <exxonmobillubricants.net>, <exxonmobillubricants.org>, and <exxonmobillub.com> domain names are registered with Dotster, Inc. and that Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent is bound by the Dotster, Inc. 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 August 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@exxonmobil-emirates.org, postmaster@exxonmobil-emirates.net, postmaster@exxonmobillubricants.net, postmaster@exxonmobillubricants.org, and postmaster@exxonmobillub.com. Also on August 5, 2011, 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.
A timely Response was received and determined to be complete on August 8, 2011.
Additional Submissions were received from Complainant on August 11, 2011, and from Respondent on August 15, 2011; both of these submissions were timely under the Forum’s Supplemental Rule 7.
On August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a world-famous company that was formed in 1999 by the merger of Exxon Corporation and Mobil Corporation. Complainant’s marks include EXXONMOBIL, EXXON, and MOBIL; these marks are the subject of hundreds of trademark registrations throughout the world. Complainant has substantial operations in the Middle East, including in the United Arab Emirates and Egypt, and its marks are registered in both of these countries. Complainant’s products include motor oil, lubricants, brake fluid, antifreeze, and related products.
Respondent is the registrant of <exxonmobil-emirates.org>, <exxonmobillubricants.net>, <exxonmobillubricants.org>, and <exxonmobillub.com>. The remaining domain name subject to this proceeding, <exxonmobil-emirates.net>, is registered through a private registration service; Complainant asserts that Respondent is the actual registrant of this domain name as well.
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s EXXONMOBIL mark because they incorporate the mark in its entirety, combining it with a geographic identifier or a descriptive term that identifies one of Complainant’s major product lines.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant states that it has not authorized Respondent to use its marks. Complainant asserts that one of the dispute domain names, <exxonmobil-emirates.org>, resolves to a website that offers counterfeit products, while the other four domain names resolve to pages comprised of links to various other commercial websites. Complainant notes that Respondent apparently was the registrant of a similar domain name, <exxonmobil-emirates.com>, that was the subject of a previous proceeding under the Policy. See Exxon Mobil Corp. v. Exxon Mobil Emirates, FA 1336924 (Nat. Arb. Forum Sept. 6, 2010). The domain names in this proceeding were registered shortly after <exxonmobil-emirates.com> was transferred to Complainant.
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith. In support thereof, Complainant asserts, inter alia, that Respondent is using the domain names to create confusion with Complainant’s marks and to divert customers from Complainant’s legitimate sites for Respondent’s own commercial gain.
B. Respondent
Respondent identifies itself as Exxon Mobil lubricants company, and states that it is registered under this name in Egypt and Dubai. Respondent’s position is not entirely clear to the Panel, but it appears that Respondent denies that it is required to participate in a proceeding under the Policy. Nonetheless, Respondent has provided the Panel with various materials evidencing its entitlement to the disputed domain names, including licenses from the emirates of Dubai and Fujairah issued in the name of “EXXON MOBIL.CO. Lubricants,” along with what appears to be a complaint filed in the Court of Appeal in Cairo, Egypt, challenging the decision of the Panel in FA 1336924 (concerning <exxonmobil-emirates.com>). (The latter document refers to a hearing to take place in December 2010, but no information regarding the disposition of the matter was included.)
C. Additional Submissions
In its Additional Submission, Complainant takes issue with Respondent’s claim that it does business as Exxon Mobil lubricants company, characterizing Respondent as merely a counterfeiter that is deliberately infringing on Complainant’s trademark rights. Complainant notes that Respondent has no trademark rights in EXXONMOBIL or any similar marks, and states that any attempt by Respondent to register such marks would have been blocked as a result of Complainant’s own longstanding prior registrations. Complainant contends that corporate filings do not establish a right to use a name, citing various state statutes as support. Finally, Complainant states that the complaint filed by Respondent in an Egyptian court regarding <exxonmobil-emiirates.com> is unrelated to this proceeding, as it involves a different domain name.
Respondent’s Additional Submission reiterates that Respondent is registered as EXXONMOBIL LUBRICANTS CO. in Egypt and the United Arab Emirates. Respondent also argues that the Egyptian court action is related to this proceeding.
The Panel considers the parties’ additional submissions only to the extent that they contain new material that could not reasonably have been included in the parties’ initial submissions.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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."
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 alleged that the entities which control the domain names at issue are effectively controlled by the same person or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” As the Complaint was served upon the contacts for all five of the disputed domain names and Respondent does not dispute that it is the registrant of all of them, the Panel considers it appropriate to include all of them within the scope of this proceeding.
The disputed domain names all incorporate Complainant’s registered mark as their most distinctive element, combining the mark with either a geographic identifier or a term describing Complainant’s products. Respondent does not dispute the obvious similarity. The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Paragraph 4(a)(i) of the Policy.
Complainant’s marks are registered throughout the world, including in the countries where Respondent does business. Complainant has not authorized Respondent to use its longstanding marks. However, Respondent has submitted evidence that it does business under the name EXXON MOBIL Lubricants Co., and that it is legally registered to do so in the United Arab Emirates. Complainant contends that Respondent has adopted Complainant’s name in order to promote its counterfeit products. Complainant further contends that Respondent’s corporate filings do not give it the right to use a name that infringes upon Complainant’s trademark rights, at least under United States law, and Respondent has failed to offer any evidence that a different rule applies under U.A.E. law.
The offering of counterfeit goods is not a bona fide offering under Paragraph 4(c)(i) of the Policy. See, e.g., Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002). Respondent’s registration certificates are insufficient to demonstrate that Respondent is commonly known by the domain name under Paragraph 4(c)(ii), and it appears to the Panel that Respondent adopted its name solely for the purpose of falsely passing itself off as being associated with Complainant. The Panel therefore finds that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
The evidence before the Panel supports Complainant’s contention that Respondent registered and is using the disputed domain names to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark. This evidence is indicative of bad faith registration and use under Paragraph 4(b)(iv) of the Policy.
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.org>, <exxonmobil-emirates.net>, <exxonmobillubricants.net>, <exxonmobillubricants.org>, and <exxonmobillub.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 18, 2011
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