Chevron Intellectual Property LLC v. Andre Schneider / DomCollect AG
Claim Number: FA1205001446021
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Andre Schneider / DomCollect AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevronpetroleum.com>, registered with 1&1 Internet AG.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2012; the National Arbitration Forum received payment on May 29, 2012.
On June 1, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <chevronpetroleum.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2012 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@chevronpetroleum.com. Also on June 7, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the CHEVRON mark, which it uses in connection with petroleum products, operating retail gasoline service stations, financial services, and gasoline credit card services. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the CHEVRON mark (e.g., Reg. No. 364,683 registered February 14, 1939).
The <chevronpetroleum.com> domain name is confusingly similar to the CHEVRON mark.
Respondent is not commonly known by the < Complainant owns recognized trademark registrations with the USPTO for the CRAIGSLIST mark.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in CRAIGSLIST.
Respondent is not authorized to use Complainant’s trademark.
The <craislist.com> domain name is used to offer services in competition with Complainant.
The <chevronpetroleum.com> domain name resolves to a website which displays a series of click-through links that compete with Complainant’s offerings under the CHEVRON mark.
The <chevronpetroleum.com> domain name attracts Internet users, for commercial gain, by implying that the disputed domain name is associated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns recognized trademark registrations with the USPTO and other registries for the CHEVRON mark.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in CHEVRON.
Respondent is not authorized to use Complainant’s trademark.
The <chevronpetroleum.com> domain name resolves to a website which displays a series of click-through links that compete with Complainant’s offerings under the CHEVRON mark.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark registrations for its CHEVRON mark in the United States and elsewhere. Regardless of the location of the parties, Complainant’s registrations of CHEVRON sufficiently establishes that Complainant has rights in a mark for the purposes of Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Under the Policy, Respondent’s addition of the descriptive term “petroleum” and appending of the top level domain name “.com” fails to differentiate the <chevronpetroleum.com> domain name from the CHEVRON mark. Therefore, the at‑issue <chevronpetroleum.com> domain name is confusingly similar to the CHEVRON mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well‑established principle that generic top‑level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent lacks rights and legitimate interests in respect of the <chevronpetroleum.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Complainant has neither licensed nor authorized Respondent to use its CHEVRON mark, to appropriate the <chevronpetroleum.com> domain name, or to otherwise associate itself with Complainant. Respondent apparently does not have any trademark or service mark rights in the CHEVRON name. Furthermore, WHOIS information for the <chevronpetroleum.com> domain name lists “Andre Schneider / DomCollect AG” as the domain name registrant and nothing in the record indicates that Respondent might otherwise be commonly known by the at‑issue domain name. Therefore, the Panel finds that Respondent is not commonly known by the <chevronpetroleum.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Additionally, the <chevronpetroleum.com> domain name resolves to a website which displays a series of click‑through links for websites pertaining to oil and gas related products, services, and job postings. These links are displayed under headings such as “Petroleum Resins” and “waste oil tank.” The display of links to goods or services similar to those of Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non‑commercial fair use under Policy ¶ 4(c)(iii). Therefore, such use does not provide Respondent with rights or legitimate interests in respect of the at‑issue domain name. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Respondent registered and uses the at-issue domain names in bad faith.
The <chevronpetroleum.com> domain name was registered and used to attract Internet users, for commercial gain, by suggesting that the disputed domain name is associated with Complainant. As mentioned above, the at‑issue domain name resolves to a website which displays click-through links to Complainant’s competitors and it appears that Respondent may be compensated for the amount of Internet users who are diverted to these links. These circumstances show that Respondent registered and is using the <chevronpetroleum.com> domain name in bad faith since the Respondent’s <chevronpetroleum.com> domain name was, and is, aimed at attracting Internet users in order to take commercial advantage of their mistakes under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronpetroleum.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 5, 2012
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