Chevron Intellectual Property LLC v. Linda Hearn
Claim Number: FA1109001409285
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Linda Hearn (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevoil.com>, registered with Hostopia.com Inc. d/b/a Aplus.net.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2011; the National Arbitration Forum received payment on September 27, 2011.
On October 3, 2011, Hostopia.com Inc. d/b/a Aplus.net confirmed by e-mail to the National Arbitration Forum that the <chevoil.com> domain name is registered with Hostopia.com Inc. d/b/a Aplus.net and that Respondent is the current registrant of the name. Hostopia.com Inc. d/b/a Aplus.net has verified that Respondent is bound by the Hostopia.com Inc. d/b/a Aplus.net 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 October 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@chevoil.com. Also on October 4, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
This Complaint is based upon Complainant’s famous CHEVRON trademark and service mark. Complainant owns U.S. trademark registrations for the CHEVRON mark and marks comprising the CHEVRON mark for a wide range of products and services including gasoline, lubricants, operating service stations, financial services, and credit card services.
Complainant and its predecessors-in-interest have used the CHEVRON mark without interruption since at least as early as 1935. Complainant owns over 80 federal trademark registrations for marks consisting of or comprising CHEVRON, including U.S. Reg. Nos. 364,683 (CHEVRON) for “lubricating oils, flushing oils”; 416,133 (CHEVRON and Design) for “motor fuels for use in internal combustion engines”); 966,763 (CHEVRON) for “extending credit card services to others;" and many others.
Complainant’s CHEVRON trademark is arbitrary and famous and is therefore entitled to the broadest protection under the law. Nutri/System, Inc. v. ConStan Indus., Inc. 809 F.2d 601, 605 (9th Cir. 1987). Complainant’s CHEVRON trademark represents the most important and distinctive elements of Complainant’s brand identification. The CHEVRON mark is shown prominently in Complainant’s advertising and promotional materials and is used to identify Complainant as the source of high quality products and services. Complainant’s CHEVRON products and services are advertised and promoted extensively in newspapers, magazines and other print and television media. Complainant spends significant resources developing consumer awareness and goodwill by promoting its quality products and services under the CHEVRON marks. The strength of Complainant’s brand recognition through its CHEVRON mark is evidenced by the fame and goodwill of the CHEVRON mark for over 70 years.
All of the trademark and domain name registrations of Complainant referenced in the above paragraphs were registered prior to November 16, 2010, the date on which Respondent registered the disputed CHEVOIL.COM domain name. Therefore, Respondent had constructive notice of Complainant’s CHEVRON mark at the time it registered the domain name at issue.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
[a.] Respondent's Domain Name Is Confusingly Similar to Complainant’s Registered CHEVRON Trademark. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i)
Respondent has registered the domain name CHEVOIL.COM, which is confusingly similar to Complainant’s registered CHEVRON mark.
The term CHEV is merely an abbreviation of Complainant's mark CHEVRON. The CHEV term registered by Respondent is identical to the first four letters in Complainant's CHEVRON mark. In addition, the abbreviation CHEV is identical in pronunciation to the first syllable in CHEVRON (the syllable that is emphasized when Complainant's CHEVRON mark is pronounced). Therefore, the abbreviation CHEV is clearly confusingly similar to Complainant's CHEVRON mark.
There have been numerous decisions in which a panel has found the abbreviation of a well-known trademark to be a "confusingly similar" domain name. As noted in one recent decision, "using an abbreviation of a complainant's mark . . . and adding a gTLD does nothing but render a disputed domain name confusingly similar to said mark." See Time Warner Cable Inc. v. Trade Out Investments Ltd./Tech Support, No. FA 1103001378264 (NAF Apr. 28, 2011 (finding domain name MYTWC.COM confusingly similar to Complainant's TIME WARNER CABLE mark); Transamerica Corp. v. Mary Taylor, No. FA0809001223542 (NAF Oct. 21, 2008) (finding domain name TRANSAMERINC.COM confusingly similar to Complainant's TRANSAMERICA mark); Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding domain name MS-OFFICE-2000.COM confusingly similar to Complainant's MICROSOFT OFFICE mark)
Respondent has also included the term OIL as an element of this domain name. This term is generic and does not serve to distinguish Respondent’s domain name from Complainant’s mark. In fact, the addition of OIL to CHEV increases the likelihood of confusion, since Complainant and its CHEVRON marks are generally associated by the public with oil-related goods and services.
The use of the generic top-level domain “.com” is also irrelevant under the Policy. See Magnum Piering, Inc. v. Mudjackers & Wilson, D20001525 (IPO January 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO November 6, 2001) (finding that incorporating complainant’s mark is sufficient to establish identical or confusing similarity for purposes of the Policy); see also Busy Body, Inc. v. Fitness Outlet Inc., D20000127 (WIPO April 22, 2000) (finding that the addition of a top-level domain is without legal significance).
Therefore, Respondent’s use of an abbreviation of Complainant’s registered CHEVRON trademark combined with the generic term OIL referring to Complainant's business creates a domain name virtually identical to Complainant’s mark for the purposes of the Policy. The domain name CHEVOIL.COM is thus clearly confusingly similar to Complainant’s registered CHEVRON mark.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name CHEVOIL.COM . ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii)
(i.) Respondent’s use of, or demonstrable preparations to use, the domain name has not been in connection with a bona fide offering of goods or services
Respondent's website at CHEVOIL.COM displays information relating to oil, gas, and chemical-related services. However, this information is merely copied from the web site of Occidental Petroleum Corporation, another oil and gas company unrelated to either Complainant or Respondent.
All of the language on Respondent's home page is copied directly from the "Company Overview" page on Occidental Petroleum's web site (with the terms "ChevOil" and "ChevChem" substituted for "Occidental Petroleum" or "Oxy" and "OxyChem").
This is obviously not a "bona fide" offering of goods or services, since Respondent is not actually offering any of these services; it has merely copied the language of a competitor in an effort to make it look as if the CHEVOIL.COM domain name is being used for legitimate business purposes.
(ii.) Respondent (as an individual, business, or other organization) is neither commonly known by the domain names nor has it acquired trademark or service mark rights in the domain names;
Complainant and its predecessors-in-interest have used the CHEVRON mark in commerce for many years. As a result, Complainant’s CHEVRON mark has become extremely well-known and famous among the general consuming public. Complainant’s ownership of several trademark applications and registrations and its long-standing use establish a clear priority in favor of Complainant regarding Complainant’s CHEVRON marks.
Complainant has neither authorized nor licensed Respondent in any way to use or exploit Complainant’s CHEVRON mark, to appropriate the domain name at issue, or to otherwise associate itself with Complainant.
(iii.) Respondent has not made a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not made a legitimate, non-commercial or fair use of the CHEVOIL.COM domain name. As noted above, Respondent is using this domain name to display language copied from Occidental Petroleum's web site in an effort to create the impression that Respondent is using the domain name for legitimate business purposes.
[c.] Respondent has Registered and Is Using the Domain Name in Bad Faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(i); 4(a)(iii).
Finally, the evidence indicates that Respondent has registered and is using the CHEVOIL.COM domain name in bad faith.
Respondent's web site at CHEVOIL.COM contains language directly copied from the web site of Occidental Petroleum Corporation. In addition, the web site displays the copyright notice "© 2005-2010 Chevron U.S.A., Inc." despite the fact that Chevron U.S.A., Inc. (Complainant's parent company) has nothing to do with the content of the web page. This by itself is sufficient to demonstrate Respondent's bad faith registration and use.
In addition, it appears that Respondent's purpose in registering and using the CHEVOIL.COM domain name is to post phony job offers and solicit resumes and "visa application fees" from job-seekers in India and other countries.
Respondent's web site has a “Jobs” page. The page states that Respondent is hiring for "Offshore positions" and invites applicants to submit their resumes via fax or e-mail. It appears from a report posted on the web site www.consumercourtforum.in that upon receiving a job application, Respondent then asks the applicant to submit a "visa application fee" of approximately $400. Of course, as explained in another report on the web site, Respondent keeps the money and the visa is never actually processed.
Respondent's CHEVOIL.COM web site has been identified as a "scam" or fraudulent web site on several other third-party Internet sites, including www.scamwarners.com, www.antifraudintl.org, and www.419legal.org.
This use of the CHEVOIL.COM domain name clearly constitutes bad faith, and is likely to cause significant damage to Complainant's CHEVRON mark among consumers who mistakenly believe that Complainant is the company posting phony job advertisements and soliciting fake "visa application fees."
In conclusion, Complainant has established that (i) Respondent’s domain name CHEVOIL.COM is identical or confusingly similar to Complainant’s CHEVRON trademark; (ii) Respondent has no rights or legitimate interests in the domain name and (iii) Respondent registered and is using the domain name in bad faith.
Having met the requirements set forth in ICANN Rule 3(b)(ix), Complainant respectfully requests that the domain name CHEVOIL.COM be transferred to Complainant.
B. Respondent failed to submit a Response in this proceeding.
Complainant Chevron Intellectual Property LLC has numerous registrations for the CHEVRON mark (e.g., Reg. No. 364,683 registered February 14, 1939) with the United States Patent and Trademark Office (“USPTO”). Complainant uses the CHEVRON mark in connection with a variety of products and services including gasoline, lubricants, operation service stations, financial services, and credit card services.
Respondent Linda Hearn registered the <chevoil.com> domain name on November 16, 2010. The disputed domain name resolves to a website which displays information relating to oil, gas, and chemical-related services that is copied from the website of one of Complainant’s competitors, Occidental Petroleum Corporation, and that offers jobs to Internet users in exchange for a resume and monetary fee.
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 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 argues it has rights in the CHEVRON mark. Panels consistently hold that the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark. See 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); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶4(a)(i).”). Complainant has demonstrated its numerous registrations with the USPTO for the CHEVRON mark (e.g., Reg. No. 364,683 registration February 14, 1939). Therefore, the Panel finds Complainant has rights in the CHEVRON mark pursuant to Policy ¶4(a)(i).
Complainant contends the <chevoil.com> domain name is confusingly similar to the CHEVRON mark. The Panel finds Respondent’s abbreviation of the mark is insufficient to distinguish the disputed domain name from Complainant’s mark. See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶4(a)(i)); see also Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”). Respondent adds to the abbreviated mark the term “oil,” which is descriptive of Complainant’s services and products. In cases such as Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), and Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005), the panel found the addition of descriptive terms fails to differentiate a disputed domain name from a mark. Therefore, the Panel finds the addition of the word “oil” in the <chevoil.com> domain name does not negate a finding of confusing similarity. Lastly, the Panel finds Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is irrelevant to a Policy ¶4(a)(i) analysis, and thus renders the <chevoil.com> domain name confusingly similar to the CHEVRON mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant argues Respondent has neither rights nor legitimate interests in the <chevoil.com> domain name. Once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to contradict the complainant’s arguments. 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.”); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). The Panel finds Complainant has made a prima facie case. This Panel has no Response from Respondent. Therefore, the Panel will make all reasonable inferences from the information available. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Out of an abundance of caution, the Panel will nevertheless review the record for information which suggests Respondent has rights or legitimate interests in the disputed domain names under the Policy ¶4(c) factors.
Complainant argues Respondent is not commonly known by the disputed domain name. Past panels have found the WHOIS record for a disputed domain name, as well as the information the complainant offers, will demonstrate whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); 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). The WHOIS record for the <chevoil.com> domain name lists “Linda Hearn” as the domain name registrant. Complainant claims Respondent has been neither authorized nor licensed by Complainant. Therefore, the Panel must reasonably find Respondent is not commonly known by the <chevoil.com> domain name pursuant to Policy ¶4(c)(ii).
Complainant argues Respondent has not made either a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name resolves to a website that displays information about topics relating to Complainant’s business in connection with the CHEVRON mark. The website also offers jobs to Internet users in exchange for a visa application fee…for which the applicant receives no benefit because no visa application is made (in the vernacular, a scam). The Panel finds this is Respondent’s real business in running the disputed domain name. The offering of jobs does not compete with those services Complainant provides in connection with the CHEVRON mark, but it might well affect Complainant’s hiring and reputation in the community. The Panel infers Respondent is making a profit from the continued use of the <chevoil.com> domain name and Respondent is using Complainant’s mark to help run her scam. Previous panels have held in cases such as Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), and Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002), that a website that is used commercially for unrelated purposes demonstrates the respondent’s lack of rights and legitimate interests in the disputed domain name. In addition, running a scam does not create any rights for Respondent. Therefore, the Panel finds Respondent has not used the <chevoil.com> domain name for either a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use because it is attempting to profit from its misappropriation of Complainant’s mark.
The Panel finds Policy ¶4(a)(ii) satisfied.
Bad faith registration and use may be identified through a respondent’s use of a disputed domain name for an unrelated, commercial purpose. See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the respondent violated Policy ¶4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶4(b)(iv).”). The disputed domain name in the present case runs a scam by offering non-existent visas to help applicants for non-existent jobs. The confusing similarity of the disputed domain name creates initial confusion for Internet users that <chevoil.com> domain name is affiliated with Complainant, which helps bring people into Respondent’s scam (driving up traffic and driving up “conversion rates”). As a result, the users then expect they will get a job with a company affiliated with Complainant in exchange for paying the bogus visa application fee. Therefore, the Panel finds Respondent profits from creating and taking advantage of Internet users’ confusion, which exemplifies bad faith pursuant to Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chevoil.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 15, 2011
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