Exxon Mobil Corporation v. Orville Walk
Claim Number: FA1306001503047
Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Orville Walk (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <exxonmobile.net>, registered with Cronon AG.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2013; the National Arbitration Forum received payment on June 4, 2013.
On June 7, 2013, Cronon AG confirmed by e-mail to the National Arbitration Forum that the <exxonmobile.net> domain name is registered with Cronon AG and that Respondent is the current registrant of the name. Cronon AG has verified that Respondent is bound by the Cronon 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, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2013 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@exxonmobile.net. Also on June 7, 2013, 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 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
a) Policy ¶ 4(a)(i): Complainant’s rights in the EXXONMOBIL mark and the confusing similarity of the <exxonmobile.net> domain name.
a. Complainant has rights in the EXXONMOBIL, EXXON MOBIL, EXXON, and MOBIL marks. Complainant is the holder of registrations for these marks with the United States Patent and Trademark Office (“USPTO”) as well as the European Office for Harmonization in the Internal Market (“OHIM”). These registrations are as follows:
i. USPTO
1. EXXONMOBIL (Reg. No. 2,510,978 registered Nov. 20, 2001);
2. EXXON (Reg. No. 884,420 registered Jan. 20, 1970);
3. MOBIL (Reg. No. 363,312 registered Dec. 20, 1938).
ii. OHIM
1. EXXON MOBIL (Reg. No. 1,142,157 registered Apr. 16, 1999);
2. EXXON (Reg. No. 145,375 registered Mar. 30, 1996);
3. MOBIL (Reg. No. 82,453 registered Apr. 30, 2003).
b. The disputed domain name is confusingly similar to the EXXONMOBIL mark. Respondent merely adds a single letter and the generic top-level domain (“gTLD”) “.net” to create the <exxonmobile.net> domain name. These changes are insufficient to differentiate the <exxonmobile.net> domain name from the EXXONMOBIL mark.
b) Policy ¶ 4(a)(ii): Respondent’s lack of rights and legitimate interests in the <exxonmobile.net> domain name.
a. Respondent is not commonly known by the EXXONMOBIL mark. The WHOIS record identifies the domain name registrant as “Orville Walk.” Respondent is not affiliated with Complainant. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods.
b. Respondent has not used the <exxonmobile.net> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain name previously displayed a copy of Complainant’s homepage and website, including Complainant’s logo and graphics associated with Complainant. The website even included copyright statements and terms and conditions lifted from Complainant’s website. See Complainant’s Exhibit E. At present, the disputed domain name resolves to an inactive website and generates malware warnings. See Complainant’s Exhibit F.
c. The <exxonmobile.net> domain name is a clear example of typosquatting. The <exxonmobile.net> domain name substantively deviates from the EXXONMOBIL mark by merely one letter, and is meant to take advantage of innocent typographical errors made by Internet users seeking Complainant’s website.
d. Respondent offers the <exxonmobile.net> domain name for sale for an undisclosed sum, as listed on the WHOIS record. See Complainant’s Exhibits A and G.
c) Policy ¶ 4(a)(iii): Respondent’s bad faith registration and use of the <exxonmobile.net> domain name.
a. Respondent is offering the <exxonmobile.net> domain name for sale. The sale is advertised on the WHOIS record and allows Internet users to submit purchase offers for the domain on Sedo.
b. The <exxonmobile.net> domain name is disruptive to Complainant’s website. Respondent previously displayed a slavish copy of Complainant’s website at the <exxonmobile.net> domain name’s resolving website. Additionally, Complainant voices concerns that the current malware warnings associated with the website are being associated with Complainant’s business.
c. Respondent’s registration and previous use of the disputed domain name was done in bad faith. The prominent and pervasive use of the EXXONMOBIL logo and other materials copied from Complainant’s website were calculated to confuse and mislead the public as to the source of Respondent’s website, and constitutes passing off. Respondent chose the <exxonmobile.net> domain name for its inclusion of the EXXONMOBIL mark in order to create an association with Complainant and its products and services.
d. The fact that the website now resolves to an inactive page does not undo the bad faith of the previous use and, in fact, supports a finding of bad faith independently.
e. Bad faith is further evident from the fact that Respondent is attempting to allow malware downloaded onto Internet users’ computers following a visit to the <exxonmobile.net> domain name.
f. The <exxonmobile.net> domain name is a clear example of typosquatting, as the domain name includes an additional letter in an attempt to capitalize on Internet users’ simple spelling errors when seeking Complainant’s website on the Internet.
g. At the time the <exxonmobile.net> domain name was registered, the EXXONMOBIL mark was internationally famous and familiar to countless consumers worldwide. The fact that Respondent’s website copied Complainant’s logo and content from Complainant’s website demonstrates without question that Respondent had actual knowledge of Complainant’s rights when it registered the <exxonmobile.net> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Exxon Mobil Corporation, is the world's largest publicly traded international oil and gas company. Complainant has rights in the EXXONMOBIL, EXXON MOBIL, EXXON, and MOBIL marks. Complainant is the holder of registrations for these marks with the United States Patent and Trademark Office (“USPTO”) as well as the European Office for Harmonization in the Internal Market (“OHIM”) as follows:
i. USPTO
1. EXXONMOBIL (Reg. No. 2,510,978 registered Nov. 20, 2001);
2. EXXON (Reg. No. 884,420 registered Jan. 20, 1970);
3. MOBIL (Reg. No. 363,312 registered Dec. 20, 1938).
ii. OHIM
1. EXXON MOBIL (Reg. No. 1,142,157 registered Apr. 16, 1999);
2. EXXON (Reg. No. 145,375 registered Mar. 30, 1996);
3. MOBIL (Reg. No. 82,453 registered Apr. 30, 2003).
Respondent, Orville Walk, registered the <exxonmobile.net> domain name on August 8, 2012. The disputed domain name previously displayed a copy of Complainant’s homepage and website, including Complainant’s logo and graphics associated with Complainant. At present, the disputed domain name resolves to an inactive website and generates malware warnings.
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 Panel finds that Complainant’s USPTO and OHIM registrations establish Complainant’s rights in the EXXONMOBIL, EXXON MOBIL, EXXON, and MOBIL marks pursuant to Policy ¶ 4(a)(i). Registration of a mark with a federal trademark authority is evidence of rights having been established in that 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).
Complainant asserts that the disputed domain name is confusingly similar to the EXXONMOBIL mark. Respondent merely adds a single letter and the gTLD “.net” to create the <exxonmobile.net> domain name. These changes are insufficient to differentiate the <exxonmobile.net> domain name from the EXXONMOBIL mark. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel held that the mere addition of a single letter to a mark in a domain name increases, rather than decreases, confusing similarity. Additionally, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that gTLDs have no impact on a determination under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <exxonmobile.net> domain name is confusingly similar to the EXXONMOBIL mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name)
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the EXXONMOBIL mark for the following reasons: a) the WHOIS record identifies the domain name registrant as “Orville Walk,” b) Respondent is not affiliated with Complainant, and c) Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods. Panels have found that the WHOIS record, along with other allegations on record are often demonstrative of whether a respondent is commonly known by a domain name when the respondent fails to submit a Response. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent has not used the <exxonmobile.net> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant states that the disputed domain name previously displayed a copy of Complainant’s homepage and website, including Complainant’s logo and graphics associated with Complainant. Further, Complainant asserts that the website even included copyright statements and terms and conditions lifted from Complainant’s website. The Panel finds that Respondent was attempting to pass off as the <exxonmobile.net> domain name being owned or run by Complainant. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). Therefore, the Panel finds that Respondent’s previous use of the <exxonmobile.net> domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii)
Complainant notes that, at present, the disputed domain name resolves to an inactive website. The panel in Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007), held that non-use of a domain name does not provide the respondent with rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Respondent’s non-use of the <exxonmobile.net> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant also notes that, at present, the disputed domain name generates malware warnings. Panels have consistently held that operating a disputed domain name to attempt to have malicious software downloaded onto Internet users’ computers is not a use which provides rights or legitimate interests to the respondent. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblance of 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).”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <exxonmobile.net> domain name pursuant to Policy ¶ 4(a)(ii).
Next, Complainant argues that the <exxonmobile.net> domain name is a clear example of typosquatting. The <exxonmobile.net> domain name deviates from the EXXONMOBIL mark by one letter, and is meant to take advantage of innocent typographical errors made by Internet users seeking Complainant’s website. Typosquatted domain names have long been found to indicate that a respondent does not have rights or legitimate interests in the domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <exxonmobile.net> domain name pursuant to Policy ¶ 4(a)(ii).
Finally, Complainant argues that Respondent offers the <exxonmobile.net> domain name for sale for an undisclosed sum, as listed on the WHOIS record. Panels have found that the offer to sell a domain name is the equivalent of demonstrating that the respondent lacks rights or legitimate interests in the disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Therefore, the Panel finds that Respondent’s willingness to part with the <exxonmobile.net> domain name in exchange for monetary compensation is evidence of respondent’s lack of rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s registration and use of the <exxonmobile.net> domain name constitute bad faith. Complainant notes that Respondent is offering the <exxonmobile.net> domain name for sale. Complainant notes that the sale is advertised on the WHOIS record and allows Internet users to submit purchase offers for the domain on Sedo. Therefore, the Panel finds that Respondent registered and is using the <exxonmobile.net> domain name in bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Complainant argues that the <exxonmobile.net> domain name is disruptive to Complainant’s website. According to Complainant, Respondent previously displayed a slavish copy of Complainant’s website at the <exxonmobile.net> domain name’s resolving website. Additionally, Complainant voices concerns that the current malware warnings associated with the website are being associated with Complainant’s business. Panels have found that the domain name is disruptive where a domain name is used in competition with the complainant’s business, such as displaying a copy of the complainant’s website. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii).
Complainant asserts that Respondent’s registration and previous use of the disputed domain name was done in bad faith. Complainant argues that Respondent essentially copied Complainant’s website, prominently and pervasively using the EXXONMOBIL logo and other materials copied from Complainant’s website, which constitutes passing off. Respondent chose the <exxonmobile.net> domain name for its inclusion of the EXXONMOBIL mark in order to create an association with Complainant and its products and services. Passing off has long been recognized as an indicator of bad faith. 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). Therefore, the Panel finds that Respondent registered and uses the <exxonmobile.net> domain name in bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that the fact that the website presently resolves to an inactive page does not undo the bad faith of the previous use and, in fact, supports a finding of bad faith independently. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel held that the non-use of a domain name indicated bad faith registration and use. Accordingly, the Panel finds that the inactive <exxonmobile.net> domain name shows bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant contends that bad faith is further evident from the fact that Respondent is attempting to allow malware downloaded onto Internet users’ computers following a visit to the <exxonmobile.net> domain name. In Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010), the panel determined that the attempt to download malicious software was evidence of bad faith. Therefore, the Panel finds that Respondent’s registration and use of the domain name indicates bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that the <exxonmobile.net> domain name is a clear example of typosquatting. The <exxonmobile.net> domain name varies from the EXXONMOBIL mark by only one letter, and is meant to take advantage of common typing mistakes made by Internet users seeking Complainant’s website. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Finally, Complainant asserts that at the time the <exxonmobile.net> domain name was registered, the EXXONMOBIL mark was internationally famous and familiar to countless consumers worldwide. Complainant contends that the fact that Respondent’s website copied Complainant’s logo and content from Complainant’s website demonstrates without question that Respondent had actual knowledge of Complainant’s rights when it registered the <exxonmobile.net> domain name. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonmobile.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 17, 2013
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